Ex Parte Det et al

Patent Trial and Appeal BoardApr 26, 2016

11968334 (P.T.A.B. Apr. 26, 2016)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/968,334 01/02/2008 Franck Det 5033-US-AA; 60469-214PUS2 8763 7590 04/26/2016 John M. Siragusa, Carlson, Gaskey & Olds 400 W. Maple, Ste. 350 Birmingham, MI 48009 EXAMINER KRUER, STEFAN ART UNIT PAPER NUMBER 3654 MAIL DATE DELIVERY MODE 04/26/2016 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte FRANCK DET, DAVY DEPEE, JEAN-NOEL CLOUX, MICHEL BEEUWSAERT, RAPHAEL PICARD, PASCAL REBILLARD, FERNANDO RICO, DAVID PILLIN, HUGUES FANIELLE, and JACOBUS BENJAMIN LEGEZ ____________________ Appeal 2014-003844 Application 11/968,334 Technology Center 3600 ____________________ Before LINDA E. HORNER, LYNNE H. BROWNE, and MARK A. GEIER, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF CASE Franck Det et al. (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 1, 4–6, 8–13, and 19–27. We have jurisdiction under 35 U.S.C. § 6(b).1 We REVERSE. 1 The amendment filed June 19, 2013 and the amendment with the instant Appeal Brief were not entered by the Examiner. Accordingly, claim 25 is not canceled and the amendments to the Specification are not entered. Appeal 2014-003844 Application 11/968,334 2 CLAIMED SUBJECT MATTER The claims are directed to a sheave assembly for an elevator system. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1 A machine room-less elevator system comprising; at least one rail; a car that is selectively movable along the rail; a machine mounted to a surface on top of the at least one rail, the top surface being disposed above an uppermost portion of the car with the car at the an uppermost position on the at least one rail; a sheave assembly supported on the car, the sheave assembly having at least two profiled belt engaging sheave portions rotatable about a common axis, with a spacing between the at least two profiled belt engaging sheave portions, wherein the at least two profiled belt engaging sheave portions each include a first radial dimension and the spacing between the two profiled belt engaging sheave portions includes a second radial dimension smaller than the first radial dimension with the rail extending into the space between the at least two profiled belt engaging sheave portions past the first radial dimension toward the second radial dimension; and a shaft supporting each of the at least two profiled belt engaging sheave portions for rotation about the common axis. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Miller Nakagaki Rico US 5,899,300 US 2002/0070080 A1 WO 99/43593 May 4, 1999 June 13, 2002 Sept. 2, 1999 Appeal 2014-003844 Application 11/968,334 3 REJECTIONS2,3 I. Claims 20, 22, and 23 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Nakagaki and Rico. II. Claims 1, 4–6, 8–13, 19, 21, and 24–27 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Nakagaki, Rico, and Miller. DISCUSSION Rejection I The Examiner finds that Nakagaki discloses “a machine (41) mounted atop (as in ‘on, to, or at the top’ per Merriam-Webster’s Online Dictionary) the at least one rail (Para. 0052).” Final Act. 5. Noting that in Nakagaki the “machine 41 is mounted on a connecting beam 33 supported on counterweight guide rails 31 such that the machine 41 does not extend upward past the top of the car 20,” Appellants argue that Nakagaki fails to disclose “a machine mounted atop the at least one rail” as required by independent claim 20. Appeal Br. 6, 12. The full definition of “atop” from Merriam-Webster’s Online Dictionary is “on top of.” Merriam-Webster.com, http://www.merriam- webster.com/dictionary/atop (last accessed April 21, 2016). Furthermore, it appears that the Examiner misunderstands the definition “on, to, or at the top” which also appears on this website. In this definition the prepositions “on, to, or at” all modify the noun “top” to indicate location. Thus, the claim 2 The rejection of claims 24–27 under 35 U.S.C. § 112, first paragraph, is withdrawn. Ans. 2. 3 We do not review Drawing and Specification objections as these issues pertain to petitionable, not appealable, matters and are not within the jurisdiction of the Board. See MPEP §§ 1002 and 1201. Appeal 2014-003844 Application 11/968,334 4 term “atop” does not encompass objects that are merely on or at another object. Rather, this claim term requires objects on the top of the other object. Furthermore, during examination of a patent application, pending claims are given their broadest reasonable construction consistent with the Specification. In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969); In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004) (emphasis added). In the context of the instant invention, the Examiner’s interpretation of the claim term “atop” as encompassing a machine mounted on the side of the rail is unreasonably broad. Accordingly, the Examiner’s finding as to Nakagaki is in error. Rico does not cure this deficiency in the rejection. For this reason, we do not sustain the Examiner’s decision rejecting independent claim 20, and claims 22 and 23, which depend therefrom, as unpatentable over Nakagaki and Rico. Rejection II Rejecting independent claims 1 and 24, the Examiner finds that Miller teaches a “machine (26) [] mounted on top of . . . rail (52).” Final Act. 6. Based on this finding, the Examiner determines that it would have been obvious to modify the machine-roomless elevator system of Nakagak[]i et al as modified by Rico et al with the teaching Miller et al to place a machine atop a rail within an elevator system in order to reduce the area in plan view of an elevator system as possible for space utilization, thereby potentially reducing installation costs or enabling installation, when replacing existing elevator systems as well as retrofitting existing buildings with an elevator system. Id. at 7. Appeal 2014-003844 Application 11/968,334 5 Noting that “[a] main feature and purpose explicitly stated in the Nakagaki reference is to save vertical space by mounting the motor below a roof of the car at an upper most position,” Appellants argue that “[t]he reasoning set forth by the Examiner does not overcome the fact that mounting of machine atop a guide rail increases vertical space, instead of reducing that space, in accordance with the purpose of Nakagaki.” Appeal Br. 7, 8. In support of this argument Appellants further note that “[i]t is well settled law that there can be no reason to support a combination when such a modification would completely change, or is directly counter to an explicit, intended purpose and operation of the base reference.” Id. at 8. If the proposed modification would render the prior art invention being modified unsatisfactory for its intended purpose, then there is no suggestion or motivation to make the proposed modification. In re Gordon, 733 F.2d 900 (Fed. Cir. 1984). Nakagaki states, “it is an object of the present invention . . . to provide an elevator capable of further reducing the vertical height of a top space of an elevator shaft, of further stably suspending a cage, and comprising a reduced number of component parts.” Nakagaki ¶ 17 (emphasis added). The modification proposed by the Examiner would defeat this objective, thus, rendering Nakagaki unsatisfactory for this intended purpose. Accordingly, Appellants’ argument is persuasive. For this reason, we do not sustain the Examiner’s decision rejecting independent claims 1 and 24, and claims 4–6, 8–13, 19, 21, and 25–27, which depend therefrom, as unpatentable over Nakagaki, Rico, and Miller. Appeal 2014-003844 Application 11/968,334 6 DECISION The Examiner’s rejections of claims 1, 4–6, 8–13, and 19–27 are REVERSED. REVERSED