Ex Parte Baranda et al

Patent Trial and Appeal Board

Sep 27, 2012

10010937 (P.T.A.B. Sep. 27, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PEDRO S. BARANDA, RICHARD L. HOLLOWELL,
JOHN T. PITTS and HUGH J. O’DONNELL
____________

Appeal 2009-011930
Application 10/010,937
Technology Center 3600
____________

Before JOHN C. KERINS, MICHAEL L. HOELTER and
HYUN J. JUNG, Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Pedro S. Baranda et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s final rejection of claims 1-9, 14-24 and 26-42.
Claims 10-13 and 25 have been canceled. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM-IN-PART.

THE INVENTION
Appellants’ invention is directed to an elevator belt assembly and a
method of making an elevator belt assembly. Independent claims 1 and 14
are illustrative:
1. A method of making an elevator belt assembly having
a plurality of cords within a jacket, comprising the steps of:

(a) aligning the plurality of cords in a selected
arrangement;

(b) applying a selected jacket material to the cords to
encase the cords in the jacket with a generally smooth,
uninterrupted surface on an exterior of the jacket that is adapted
to contact sheaves in an elevator system; and

(c) maintaining a selected tension on each of the cords on
an individual cord basis while applying the jacket such that the
tension on the cords controls positions of the cords within the
jacket and the cords are uniformly spaced from the generally
smooth, uninterrupted surface on the jacket along the length of
the belt assembly.

14. An elevator belt assembly, comprising:

a plurality of cords aligned generally parallel to a
longitudinal axis of the belt along a length of the belt; and

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a jacket over the cords, the jacket including a generally
smooth, uninterrupted exterior surface extending along the
entire belt length that is adapted to contact other components in
an elevator system as the belt moves, wherein the jacket
comprises a waxless polyurethane.

THE REJECTIONS
The Examiner has rejected:
(i) claims 1, 3, 4, 9, 15, 16, 19, 20, 24, 28-37, 38, 40 and 421 under 35
U.S.C. § 103(a) as being obvious over Prewo (WO 01/14630 A1, published
Mar. 1, 2001) in view of Kilborn (US 2,740,459, issued Apr. 3, 1956);
(ii) claim 2 under 35 U.S.C. § 103(a) as being obvious over Prewo in
view of Kilborn and Nassimbene (US 2,194,833, issued Mar. 26, 1940);
(iii) claims 5-7 under 35 U.S.C. § 103(a) as being obvious over Prewo
in view of Kilborn and Harper (US 3,848,037, issued Nov. 12, 1974);
(iv) claim 8 under 35 U.S.C. § 103(a) as being obvious over Prewo in
view of Kilborn and Tsai (US 6,727,433 B2, issued Apr. 27, 2004);
(v) claims 14 and 41 under 35 U.S.C. § 103(a) as being obvious over
Prewo in view of Harper;
(vi) claims 17 and 18 under 35 U.S.C. § 103(a) as being obvious over
Prewo in view of Kilborn and Harper;
(vii) claims 21-23, 26 and 27 under 35 U.S.C. § 103(a) as being
obvious over Prewo in view of Harper; and

1 Claims 19 and 38 were omitted from list of claims in the statement of the
rejection; however, claims 19 and 38 were specifically addressed in the body
of the grounds of rejection.
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(viii) claims 35 and 39 under 35 U.S.C. § 103(a) as being obvious
over Prewo in view of Harper and Pitts (US 2003/0069101 A1, published
Apr. 10, 2003).
ANALYSIS
Claims 1, 3, 4, 9, 15, 16, 19, 20, 24, 28-38, 40 and 42--Obviousness--
Prewo/Kilborn
Of the claims subject to this rejection, claims 1, 15 and 24 are
independent. Appellants present the same arguments for all of these claims.
The ground of rejection directed to these claims notes that Prewo
“does not disclose the cords are tensioned individually while applying the
jackets.” Ans. 3. The Examiner further notes that belts produced in Kilborn
have a plurality of individually tensioned cords, and that it would have
therefore been obvious “to modify the belt of [Prewo] so that each cord is
tensioned individually with a selected tension . . . .” Ans. 3-4.
A shortcoming of the stated ground of rejection is that claims 1, 15
and 24 are method claims, and that Prewo does not disclose the claimed
method steps.2 The Examiner appears to recognize this, in that the Response
to Arguments section evidences that the method disclosed in the Kilborn
patent is relied on in the rejection as well. Ans. 9-10.
Appellants argue that the method disclosed in Kilborn will not
produce the type of belt shown in the Prewo reference, as well as in
Appellants’ claimed method, in which the jacket material encases3 the cords

2 Prewo discloses only that “the tension member includes a plurality of
individual load carrying cords, strands and/or wires encased within a
common layer of coating,” and “[t]ension member 22 comprises a common
urethane or other polymeric jacket 26.” Prewo, p. 2, ll. 26-28; p. 5, l. 3.
3 As will be apparent in the ensuing analysis, Appellants and the Examiner
both appear to interpret the claim term “encase” to require that the jacket
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with a generally smooth, uninterrupted surface, and wherein maintaining
selected tension on the cords controls the position of the cords within the
jacket. App. Br. 9. Appellants note that the laying of the cords or cables on
a table, and then applying rubber from the top of the cords or cables will not
result in forming a jacket that is on both sides of the cords. Id.; Reply Br. 2-
3.
We agree with Appellants in this respect. Claims 1, 15 and 24 require
applying a jacket material to encase the cords in the jacket with a smooth,
uninterrupted surface on an exterior of the jacket, and maintaining tension
on the cords to control the position of the cords within the jacket. The
Examiner appears to take the position that these features are disclosed by
Kilborn, suggesting that the “cables are resting to initially prepare the cables
for tensioning and the prevention of tangling . . . ,” that the “clamping
member (13) is used to lower and raised [sic] the cable section,” and that
“Kilborn et al. clearly disclose the cable section is covered with rubber and
fabric. This can be seen in fig. 7.” Ans. 9. These statements, and
particularly the last statement, mischaracterize the Kilborn disclosure.
Kilborn describes that the application of the cushion layer (jacket) “is
done under pressure so as to cause the cushion layer to be forced into the
spaces between the cords and cables with the result that a unitary tension
layer is provided composed of wires embedded in the cushion layer of

material completely surround the cords. This is consistent with Appellants’
Specification, which discusses that “[i]n prior designs, the portions of the
cords at the groove locations were at least partially exposed and not fully
covered with the material of the jacket 44.” Spec., p. 6, para. [29]; see also
Fig. 1. It is also consistent with how this term is used by those skilled in the
art. See Prewo, p. 2, ll. 26-28 and Figs. 2-5.
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rubber or similar material.” Kilborn, col. 6, ll. 11-15. It is clear from
viewing Figure 4 of Kilborn that the portions of the cords and cables resting
on table 12 during the application process are not covered with the rubber
and fabric. Appellants are correct that the Examiner’s reliance on Figure 7
as showing that the cable sections are covered with rubber is misplaced.
Reply Br. 3. The rubber elements shown in that drawing are not the cushion
layer or jacket encasing the cords, but rather are components of clamping
members 33 and 41. Kilborn, Fig. 7; col. 4, ll. 43-46. ll. 68-71.
The Examiner’s rejection fails to adequately demonstrate that the
subject matter of independent claims 1, 15 and 24 would have been obvious
over the combination of the Prewo and Kilborn references. The rejection of
these claims, as well as that of claims 3, 4, 9, 16, 19, 20, 28-38, 40 and 42
depending there from, is not sustained.
Claim 2--Obviousness--Prewo/Kilborn/Nassimbene
Nassimbene is not relied upon by the Examiner in any manner that
would remedy the deficiency noted above with respect to the proposed
combination of Prewo and Kilborn in rendering obvious the subject matter
of claim 1. The rejection of claim 2 is not sustained.
Claims 5-7--Obviousness--Prewo/Kilborn/Harper
Harper is not relied upon by the Examiner in any manner that would
remedy the deficiency noted above with respect to the proposed combination
of Prewo and Kilborn in rendering obvious the subject matter of claim 1.
The rejection of claims 5-7 is not sustained.
Claim 8--Obviousness--Prewo/Kilborn/ Tsai
Tsai is not relied upon by the Examiner in any manner that would
remedy the deficiency noted above with respect to the proposed combination
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of Prewo and Kilborn in rendering obvious the subject matter of claim 1.
The rejection of claim 8 is not sustained.
Claims 14 and 41--Obviousness--Prewo/Harper
Independent claim 14 is directed to an elevator belt assembly having a
plurality of cords and a jacket over the cords, wherein the jacket comprises a
waxless polyurethane. App. Br., Claims Appendix. The Examiner found
that Prewo discloses the claimed belt, with the exception of the belt
comprising a waxless polyurethane. Ans. 7. The Examiner concluded that it
would have been obvious, in view of Harper, to modify the Prewo belt such
that it is made from waxless urethane, “in order to ensure better friction,
provide a clean and blemish free surface so as to allow the surface to be
painted such that the painting will effectively adhere polyurethane material.”
Id.
Appellants argue that Harper does not teach that its polyurethane
material does not contain any wax, that urethanes typically include a wax,
and that it is not reasonable to assume that a special, waxless polyurethane
would be used (in Harper) when, as noted, polyurethanes typically include a
wax. App. Br. 14, 16; Reply Br. 5-6. Appellants cite to the O’Donnell4
published application as evidencing that urethanes typically include a wax.
Even if we accept that urethanes typically include a wax, what is
relevant is what Harper teaches. In response to the Examiner’s citation to a
passage at column 5, line 39 to column 6, line 33 of Harper as disclosing the
composition of the polyurethanes used therein, Appellants point out that the
disclosure mentions that the polyurethane “can contain ‘one or more surface
active agents.’” Reply Br. 6, quoting Harper, col. 5, l. 47. Appellants

4 US 2003/0024770 A1, published Feb. 6, 2003.
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further maintain that one type of surface active agent is an emulsifier, and
that waxes are used in polyurethane as emulsifiers. Even further accepting
those statements as true, Harper plainly states that surface active agents are
“optionally” included. Harper, col. 5, l. 47. Harper additionally discloses a
number of specific examples which do not appear to include wax in the
polyurethane composition. See Harper, col. 6, l. 48-col. 14, l. 5. As such,
we are not persuaded that Harper fails to disclose waxless polyurethanes.
Appellants further contend that there is no benefit to combining the
references, in that “there is no concern with painting the belt of the Prewo
reference . . . .” App. Br. 16. However, the Examiner also found that the
modification employing a waxless polyurethane would provide the benefit of
ensuring better friction and providing a clean and blemish-free surface. Ans.
7. Appellants have not contested the Examiner’s position in this regard.
While the Examiner further explained that this would allow for painting of
the material, those benefits would obtain even if the belt is not to be painted.
Furthermore, Appellants themselves recognize a benefit to having the
exterior surfaces of the belt be smooth and uninterrupted. Spec., p. 6, para.
[27].
Appellants have failed to demonstrate error in the Examiner’s
decision to reject claim 14, and claim 41 which was not separately argued,
and is thus grouped therewith. The rejection of claims 14 and 41 is
sustained.
Claims 17 and 18--Obviousness--Prewo/Kilborn/Harper
Harper is not relied upon by the Examiner in any manner that would
remedy the deficiency noted above with respect to the proposed combination
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of Prewo and Kilborn in rendering obvious claim 15, from which these
claims depend. The rejection of claims 17 and 18 is not sustained.
Claims 21-23, 26 and 27--Obviousness--Prewo/Harper
Independent claims 21 and 26 each recite a method that includes the
step of maintaining tension on the cords while applying a jacket. App. Br.,
Claims Appendix. As discussed above with respect to the rejection of
claims 1, 15 and 24, Prewo does not disclose the claimed method steps.
Harper also does not disclose the aforementioned limitation. See App. Br.
18. Accordingly, the rejection of claims 21 and 26 and their dependent
claims 22, 23, and 27 is not sustained.
Claims 35 and 39--Obvious-Prewo/Harper/Pitts
Pitts is not relied upon by the Examiner in any manner that would
remedy the deficiency noted above with respect to the proposed combination
of Prewo and Kilborn in rendering base claims 1 and 24, from which claims
35 and 39 ultimately and respectively depend. In addition, we agree with
Appellants that Pitts is not available as a prior art reference as to the present
application. The rejection of claims 35 and 39 is not sustained.

CONCLUSIONS
The Examiner erred in concluding that the subject matter of
independent claims 1, 15 and 24 would have been obvious over Prewo in
view of Kilborn.
The Examiner erred in concluding that the subject matter of
independent claims 21 and 26 would have been obvious over Prewo in view
of Harper.
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Appellants have not persuaded us that the Examiner erred in
concluding that the subject matter of claims 14 and 41 would have been
obvious over Prewo in view of Harper.

DECISION
The rejections of claims 1-9, 15-24, 26-40 and 42 under 35 U.S.C.
§103(a) are REVERSED.
The rejection of claims 14 and 41 under 35 U.S.C. § 103(a) is
AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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