Ex Parte Fargo et al

Patent Trial and Appeal Board

Aug 24, 2017

12598239 (P.T.A.B. Aug. 24, 2017)

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.
12/598,239 10/30/2009 Richard N. Fargo 60469-287PUS1 ;PA0000369U 7911
64779 7590 08/28/2017
CARLSON GASKEY & OLDS
INTELLECTUAL PROPERTY DEPARTMENT
400 W MAPLE STE 350
BIRMINGHAM, MI 48009
EXAMINER
KRUER, STEFAN
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
08/28/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
frederic .tenney@otis.com
ptodocket @ cgolaw. com
cgolaw@yahoo.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD N. FARGO
and RAYMOND J. MONCINI
Appeal 2017-001823
Application 12/598,239
Technology Center 3600
Before MICHAEL J. STRAUSS, JOYCE CRAIG, and
AARON W. MOORE, Administrative Patent Judges.
MOORE, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2017-001823
Application 12/598,239
STATEMENT OF THE CASE
Appellants1 appeal under 35 U.S.C. § 134(a) from a Final Rejection of
claims 1, 2, 6—15, and 17—20, which are all of the pending claims. We have
jurisdiction under 35 U.S.C. § 6(b).
We affirm-in-part.
THE INVENTION
The application is directed to elevator load bearing assemblies. (See
Abstract.) Claims 1, 12, and 18, reproduced below, exemplify the subject
matter on appeal:
1. A method of designing a load bearing assembly for use in an
elevator system, comprising:
determining a desired life of the load bearing assembly;
determining a desired retirement strength of the load bearing
assembly at an end of the desired life;
using monitoring equipment for determining at least one
relationship between the desired life, the desired retirement
strength and a potential factor of safety for the load bearing
assembly; and
selecting an initial factor of safety for the load bearing
assembly based upon the determined at least one relationship.
12. A load bearing assembly for use in an elevator system,
comprising
a plurality of load bearing members each having a selected
strength such that the selected strength and a number of the load
bearing members provides an initial factor of safety for the load
bearing assembly and the initial factor of safety is based upon a
desired life for the load bearing assembly and a selected
1 Appellants identify Otis Elevator Company as the real party in interest.
(See App. Br. 1.)
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Application 12/598,239
retirement strength for the load bearing assembly at an end of the
desired life, wherein the initial factor of safety is one of higher
or lower than a corresponding factor of safety required by an
applicable code from a region in which the load bearing assembly
will be installed.
18. A method of monitoring an elevator system load bearing
assembly, wherein the load bearing assembly has a
predetermined desired life, a predetermined desired retirement
strength at an end of the predetermined desired life and a selected
initial factor of safety based upon the predetermined desired life
and the predetermined desired retirement strength, the method
comprising the steps of:
monitoring the current strength of the load bearing assembly
at least once each week to confirm that the current strength
exceeds the desired retirement strength; and
providing an indication if the current strength is at or below
the desired retirement strength.
THE REJECTIONS
1. Claims 1, 2, and 6—11 stand rejected under 35 U.S.C. § 101
“because the claimed invention is directed to a judicial exception (i.e., a law
of nature, a natural phenomenon, or an abstract idea) without significantly
more.” (Final Act. 2—3.)
2. Claims 10, 12—15, and 17 stand rejected under 35 U.S.C. § 112,
first paragraph, as failing to comply with the written description
requirement. (See Final Act. 3—5.)
3. Claims 1, 2, and 6—11 stand rejected under 35 U.S.C. § 112,
second paragraph, as indefinite for failing to particularly point out and
distinctly claim the subject matter which the inventor or a joint inventor
regards as the invention. (See Final Act. 5—7.)
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Application 12/598,239
4. Claims 1, 2, 6—15, and 17—20 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Maeda et al (JP 2004 075221 A; published
Mach 11, 2004). (See Final Act. 7—10.)
ANALYSIS
Patent Eligibility
The Examiner finds claims 1, 2, and 6—11 “directed to a method of
designing including mental steps of calculation/selection as well as ‘using
monitoring equipment for determining a relationship between’ three
variables selected for a method of designing a load bearing assembly.”
(Final Act. 2.) The Examiner further finds that “[t]he claims do not include
additional elements that are sufficient to amount to significantly more than
the judicial exception.” (Id.)
Appellants argue these claims are eligible because “claim 1 includes a
monitoring device that is used for performing at least one of the method
steps” and “such structural subject matter is not merely an abstract idea and
is not the simple implementation of an abstract idea on a generic computer.”
(App. Br. 3.) Appellants further argue that “there are similarities between at
least some of the claimed subject matter in this case and the claimed subject
matter in [Diamond v. Diehr, 450 U.S. 175 (1981),] because both cases
include taking measurements and making a determination based on those
measurements.” (Id. at 4.)
We agree with the Examiner. These claims are directed to the abstract
idea of designing a load bearing assembly. They are not similar to those
held eligible in Diehr because the Diehr claims were directed to “a physical
and chemical process for molding precision synthetic rubber products” that
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“involve[d] the transformation of an article, [namely] raw, uncured synthetic
rubber, into a different state or thing.” Diehr, 450 U.S. at 184, 175.
Appellants’ method results only in an intangible “factor of safety.”
We instead find these claims to be like those addressed in Parker v.
Flook, 437 U.S. 584 (1978), in which the Supreme Court held ineligible
claims directed to a method of measuring the value of a process variable,
using an algorithm to calculate an updated alarm limit value, and adjusting
the alarm limit to the updated value. The Flook claims included
measurement of a real world characteristic (e.g., a temperature)—which was
necessarily done with “a monitoring device” of some sort—but nevertheless
were unpatentable because, “once [the] algorithm [was] assumed to be
within the prior art, the application, considered as a whole, contained] no
patentable invention.” Id. at 594. The Court explained that “the discovery
of [a phenomenon of nature or mathematical formula] cannot support a
patent unless there is some other inventive concept in its application.” Id.
Here, if we set the idea aside, all that remains is the generically recited
“monitoring equipment,” which could be virtually anything that performs
the recited determining step and, standing alone, “cannot support a patent.”
Appellants’ claims, directed to a method for determining an initial safety
factor, are analogous, at least from a patent eligibility perspective, to the
Flook claims for determining an alarm limit.
Regarding Appellants’ citation to Ex parte Cutlip, Appeal 2011-
011658, Application No. 11/345,010, we note that non-precedential
decisions of other panels are not binding in this case and that “[i]t is
immaterial in ex parte prosecution whether the same or similar claims have
been allowed to others.” In re Wertheim, 541 F.2d 257, 264 (CCPA 1976).
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In any event, Ex parte Cutlip is not germane because the rejection in that
case was made on the grounds that the claims were “drawn to a computer
program per se,” and the panel determined that such a rejection could not be
sustained without further analysis, including claim construction. See June 2,
2014 Decision on Appeal, Appeal No. 2011-011658, App. Serial No.
11/345,010, pp. 5—6. The present case does not involve a rejection of claims
as directed to software per se. Moreover, Appellants’ assertion that “aprima
facie case of non-statutory subject matter is not established against a claim
that includes a processor” (App. Br. 5) is not consistent with current law;
instead, it is clear that “after Alice,. . . recitation of generic computer
limitations does not make an otherwise ineligible claim patent-eligible.’”
DDR Holdings, LLCv. Hotels.com, L.P., 773 F.3d 1245, 1256 (Fed. Cir.
2014) (citing Alice Corp. Pty. v. CLS Bank Inti, 134 S. Ct. 2347, 2358
(2014)).
Because we are not persuaded by Appellants’ arguments, we sustain
the rejection of claims 1, 2, and 6—11 under Section 101.
Written Description
The Examiner finds claims 10, 12—15, and 17 recite “subject matter
which was not described in the specification in such a way as to reasonably
convey to one skilled in the relevant art that the inventor or a joint inventor
... at the time the application was filed, had possession of the claimed
invention.” (Final Act. 3.) In particular, the Examiner finds that “respective
selection of initial factor of safety based on either [a] local codes or [b] a
number and respective, selected strength of load bearing members is not
supported by the specification.” {Id. at 4.)
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We do not agree that support is lacking in the original application for
the reasons identified by Appellants (see App. Br. 5—6) and because these
claims are either identical to, or insubstantially different from, original
claims. In particular, current claim 10 tracks original claim 10; current
claim 12 is original claim 12 amended to include the subject matter of
original claim 16; and current claims 13—15 are identical to original claims
13—15. We thus decline to sustain the rejection of claims 10, 12—15, and 17
under 35U.S.C. § 112, first paragraph.
Indefiniteness
The Examiner finds claims 1, 2, and 6—11 indefinite because “claim 1
recites by amendment the use of monitoring to determine at least one
relationship amongst three variables — desired life, desired retirement
strength and a potential factor of safety — to select an initial factor of safety
based on the at least one relationship.” (Final Act. 5.) We do not agree that
the claim is indefinite. The application describes selecting a load bearing
assembly (“LBA”) corresponding to a strength curve that achieves a desired
initial factor of safety for different usage situations. For example, one may
obtain the curves shown in Figure 4 by testing assemblies under different
conditions, determining where each curve crosses the left vertical axis (each
crossing being a “potential factor of safety”), and selecting one as the “initial
factor of safety” for an application with the corresponding usage pattern.
(See Spec. ]Hf 26—27.) In other words, two variables (age and retirement
strength) are used to determine a set of potential safety factors (not a third
variable, but results derived empirically) and one of the potential safety
factors is selected as the initial safety factor.
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We are also persuaded that the rejections of claims 2, 9, 10, and 11 as
indefinite are in error, for the reasons stated above, namely that we find it
sufficiently clear that the desired age and retirement strength are used to
determine potential safety factors, one of which is selected as the initial
safety factor.
For these reasons, we decline to sustain the rejection of claims 1, 2,
and 6—11 under 35U.S.C. § 112, second paragraph.2
Obviousness
In rejecting claims 1, 10, and 12, the Examiner finds Maeda discloses
the recited limitations, except that it is “expressly silent with respect to a
potential factor of safety, therein an initial safety factor.” (Final Act. 7.)
The Examiner further finds, however, as follows:
[I]n that a determination of rope configuration and material(s)
was made for compatibility with various applications and
associated operating parameters, therein expected usage patterns
(Para. 0012 - 0016), wherein a service life of the load bearing
assembly is dependent upon said parameters, an initial factor of
safety of the load bearing assembly based upon a desired
(service) life and a residual strength upon conclusion of said life
would have been obvious to one having ordinary skill in the art
for matters of safety and operating costs, the latter including
downtime, logistics and capital associated with replacing the
load bearing assembly.
(Id. at 8.)
2 The Examiner also found that “[fjurther to Claim 1, penultimate line, the
limitation ‘the’ of ‘the initial factor of safety’ lacks antecedent basis. (Final
Act. 6.) This issue is now moot, as the claims were amended after final to
correct the antecedent basis problem and that amendment was entered on
January 1, 2016.
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Appellants argue “[t]he Maeda reference does not contain any
teaching regarding considering an initial safety factor” and “the silence
regarding an initial safety factor prevents the Examiner from meeting the
burden imposed upon the Office for establishing aprima facie case.” (App.
Br. 7.) Appellants further argue “[t]he Examiner appears to be making an
inherency argument that is based on nothing more than a suggestion by the
Examiner that the approach of Appellant’s claims is a possibility given the
Maeda reference.” {Id. at 8.) They additionally argue Maeda “is concerned
with providing visual inspection capability because it is not possible -
according to the teachings of that reference - to accurately predict whether
the rope of the Maeda reference should be replaced without visually
inspecting it” and “[t]here is no teaching at all within the Maeda reference
regarding taking a proactive approach to designing an elevator load bearing
assembly based upon a predetermined or preselected desired life and a
predetermined or preselected retirement strength at the end of that desired
life.” {Id. at 9.)
The Examiner responds that “Appellant’s method is evidently directed
to well-known and established methods of testing or monitoring load-
bearing assemblies in the laboratory and in the field,” and that “by using
respective equipment that is old and well-known” one could “derive
performance characteristics that can be entered as values into an algorithm
whereby either one or more of the values - notably factor of safety - can be
selectively adjusted to provide desired curves of strength and factor of safety
over life (system) time.” (Ans. 7.)
We agree with Appellants that the Examiner has failed to establish
that independent claims 1 and 12 are obvious in view of Maeda. The
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reference is primarily directed to a system that monitors installed cables for
defects, and we fail to see how that might teach or suggest the claimed
subject matter, in which an initial factor of safety is based on a desired
retirement life, a desired retirement strength, and a potential safety factor, as
recited in claims 1 and 12. Given that the reference says nothing about
determining an initial safety factor or using the claimed parameters, the
Examiner’s finding that “an initial factor of safety of the load bearing
assembly based upon a desired (service) life and a residual strength upon
conclusion of said life would have been obvious ... for matters of safety and
operating costs, the latter including downtime, logistics and capital
associated with replacing the load bearing assembly” is conclusory, lacks
evidentiary support, and is thus insufficient to establish prima facie
obviousness.
We accordingly decline to sustain the Section 103 rejection of
independent claims 1 and 12 and their dependent claims 2—11 and 13—17.
The Examiner’s cursory rejection of claim 18 fails to account for the
language in the preamble regarding the predetermined desired life,
predetermined desired retirement strength, and a selected initial factor of
safety. (See Final Act. 8—9.) We thus find that it is also insufficient to
establish obviousness and decline to sustain the Section 103 rejection of
claim 18 and, for the same reason, its dependent claims 19 and 20.
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DECISION
The rejection of claims 1,2, and 6—11 under 35U.S.C. § 101 is
affirmed. The rejections of claims 1, 2, 6—15, and 17 under 35 U.S.C. § 112
are reversed. The rejection of claims 1—2, 6—15, and 17—20 under 35 U.S.C.
§ 103 is reversed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
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