Ex Parte Mustalahti et al

Patent Trial and Appeal BoardOct 31, 2012

11097392 (P.T.A.B. Oct. 31, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte JORMA MUSTALAHTI and ESKO AULANKO ____________ Appeal 2010-006705 Application 11/097,392 Technology Center 3600 ____________ Before LINDA E. HORNER, STEVEN D.A. McCARTHY, and GAY ANN SPAHN, Administrative Patent Judges. SPAHN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Jorma Mustalahti and Esko Aulanko (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s final rejection of claims 1, 3-5, and 7-25. Appellants cancelled claims 2 and 6. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-006705 Application 11/097,392 2 The Claimed Subject Matter Claim 1 (the sole independent claim), reproduced below, is representative of the subject matter on appeal. 1. An elevator, without a counterweight and without a machine room, comprising: a hoisting machine; a set of hoisting ropes; a traction sheave; an elevator car; and elevator car guide rails; wherein the hoisting machine engages the hoisting ropes via the traction sheave, wherein the elevator car is at least partially supported by the hoisting ropes to move the elevator car, wherein the elevator car is suspended on the hoisting ropes by at least one first diverting pulley and at least one second diverting pulley, wherein the hoisting ropes go upwards from both sides of the at least one first diverting pulley, wherein the hoisting ropes go downwards from both sides of the at least one second diverting pulley, wherein the elevator car guide rails are arranged on one side of the elevator car, and wherein one end of the hoisting ropes is fastened substantially immovably with respect to the elevator car so as to be movable with the elevator car. The Rejections The following Examiner’s rejections are before us for review: (1). Claims 1, 3, 7-12, and 25 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele (DE 1 251 926 B, iss. Oct. 12, 1967) and Köster (US 6,193,017 B1, issued Feb. 27, 2001); Appeal 2010-006705 Application 11/097,392 3 (2). Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Arnoult (FR 2 823 734 A1, pub. Oct. 25, 2002); (3). Claims 13, 15, 18, and 23 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Wittur (US 2004/0129501 A1, pub. Jul. 8, 2004); (4). Claim 14 is rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Vanhala (EP 0 578 237 A1, pub. Jan. 12, 1994); (5). Claim 16 is rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Dambre (US 4,952,249, iss. Aug. 28, 1990); (6). Claim 17 is rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Baranda ʼ589 (WO 99/43589 A1, pub. Sep. 2, 1999); (7). Claims 19, 20, and 24 are rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Kato (US 2003/0089551 A1, pub. May 15, 2003); (8). Claim 22 is rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, Baranda ʼ589, and Kato; and (9). Claim 21 is rejected under 35 U.S.C. § 103(a) as unpatentable over Haeffele, Köster, and Baranda ʼ324 (US 6,386,324 B1, issued May 14, 2002). OPINION Rejection (1) – Obviousness based on Haeffele and Köster Appellants argue independent claim 1 (App. Br. 22-34) and do not present any arguments for separate patentability of dependent claims 3, 7-12, Appeal 2010-006705 Application 11/097,392 4 and 25 other than those set forth for independent claim 1 (App. Br. 34). Therefore, dependent claims 3, 7-12, and 25 fall with independent claim 1. See 37 C.F.R. § 41.37(c)(1)(vii). The Examiner finds that Haeffele substantially discloses the subject matter of independent claim 1, except that “Haeffele is silent with respect to an elevator without a machine [room], elevator guide rails and one or two ends of the hoisting ropes [being] fastened substantially immovably with respect to the elevator car.” Ans. 3-4. To cure the deficiencies of Haeffele, the Examiner turns to Köster to teach the missing elements. Ans. 4. The Examiner concludes that it would have been obvious to one of ordinary skill in the art to modify Haeffele’s elevator to be without a machine room, to have guide rails arranged on one side of the elevator car, and to have a closed-loop rope run by the teachings of Köster “for respective reduction in loading on the system, thereby drive capacity, spatial requirements and undesirable, sudden movement of an unladed elevator car – in total, reduced installation- and operating costs and enhanced user comfort.” Id. First, Appellants argue that the combination of Haeffele and Köster fails to teach or suggest the subject matter of the third through fifth “wherein” clauses of claim 1 as quoted supra (App. Br. 22-23); that Haeffele fails “to explicitly disclose ‘a hoisting machine’” (App. Br. 26); and that Köster “includes no diverting pulleys” (App. Br. 28-30). We are not persuaded by Appellants’ arguments because the Examiner found that Haeffele discloses an unillustrated hoisting machine driving the driving pulleys 6 (Ans. 3) and first and second diverting pulleys 10, 14 with upwardly and downwardly directed hoisting ropes, respectively, as required by the third through fifth “wherein” clauses of claim 1 as quoted supra (Ans. Appeal 2010-006705 Application 11/097,392 5 4). Appellants have not explained why the Examiner’s findings that Haeffele discloses these elements are in error. Appellants separately discuss Haeffele (App. Br. 24-26) and Köster (App. Br. 26-28); however, one cannot show nonobviousness by attacking references individually where the rejections are based on a combination of references. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413, 426 (CCPA 1981). Next, Appellants argue that “the Examiner’s attempted combination of Haeffele and Köster fails to establish a prima facie case of obviousness” for several reasons. App. Br. 29-34. First, Appellants argue that Köster’s omission of a counterweight to eliminate the risk of the elevator suddenly moving upwardly (see Köster, col. 2, ll. 43-47) “provides no motivation to combine Haeffele and Köster,” because Haeffele’s Figure 2 embodiment applied by the Examiner already has no counterweight. App. Br. 29. Although we agree that Haeffele teaches an elevator without a counterweight, we do not agree that the Examiner has modified Haeffele by Köster to eliminate the counterweight. Rather, the Examiner has only modified Haeffele to be without a machine room, to have guide rails on the side of the elevator car, and to have one end of the hoisting ropes fastened substantially immovably with respect to the elevator car in a closed-loop rope run. Thus, we are not persuaded of error by the Examiner based upon this argument of Appellants. Appellants also argue that “the ‘closed loop’ of Köster (discussed, for example, at c. 2/l. 65 – c. 3,/l. 1 of Köster) appears to include no diverting pulleys on elevator car 12” and thus, does not satisfy the third through fifth wherein clauses of claim 1 as quoted supra. App. Br. 29-30. Emphasis Appeal 2010-006705 Application 11/097,392 6 omitted. Appellants also argue that Köster instead teaches “carrying means 15 [which] appears to be connected directly to elevator car 12” as shown by Köster’s Figures 1, 2, and 4. App. Br. 30. These arguments do not persuade us of Examiner error because the Examiner found that Haeffele discloses diverting pulleys 10, 14 meeting the claim limitations in the third through fifth “wherein” clauses of claim 1 as quoted supra and that Köster discloses one end of the hoisting rope fastened substantially immovably with respect to the elevator car 12. Appellants next discuss an embodiment of Haeffele wherein “with suitable conditions, it is also possible to operate the lift without reversing rollers on the cage, i.e. with the rope attached directly to the cage” (App. Br. 30 (discussing Haeffele, p. 2, ll. 22-241; Emphasis omitted)) and Appellants argue that “even assuming, arguendo, that a person having ordinary skill in the art (‘PHOSITA’) would attempt to combine Haeffele and Köster . . . the resulting combination would embrace the teachings and/or suggestions that Haeffele and Köster share in common,” namely, no diverting pulleys (App. Br. 30) and a 1:1 suspension ratio (App. Br. 31). Consequently, according to Appellants, the resulting combination of Haeffele and Köster, would not meet the third to fifth “wherein” clauses of claim 1 as quoted supra. We are not persuaded of Examiner error because Appellants’ arguments address a hypothetical combination of Haeffele and Köster, not the Examiner’s proposed combination of Haeffele’s Figure 2 embodiment having diverting 1 As Haeffele is a foreign language reference, our citations to Haeffele are to an English Translation submitted by Appellants in an Information Disclosure Statement filed on January 18, 2007 which is of record in the application file. Appeal 2010-006705 Application 11/097,392 7 pulleys 10, 14 and a 2:1 suspension ratio with Köster’s teachings of machine roomless operation, guide rails, and ends of the hoisting ropes being substantially immovably fastened to the elevator car. Moreover, although claim 1 calls for first and second diverting pulleys having hoisting ropes going upwardly and downwardly, respectively, therefrom, none of the claims appear to explicitly recite a suspension ratio. Finally, Appellants also present arguments against the Examiner’s reason for combining Haeffele and Köster including hindsight arguments (App. Br. 32-34) and arguments that none of the Examiner’s reasons for combining Haeffele and Köster would have motivated a person of ordinary skill in the art to make the combination (Reply Br. 4-7). With respect to hindsight, Appellants argue that “the Examiner found the suggestion to make the claimed combination in Appellants’ disclosure,” because “ignoring the teachings and/or suggestions that Haeffele and Köster share in common, is evidence that the Examiner started with Appellants’ disclosure and then, from that starting point, used Appellants’ disclosure as a road map to suggest combining Haeffele and Köster.” App. Br. 32-33; Reply Br. 14-15. With respect to the Examiner’s reasoning for combining Haeffele and Köster, Appellants divide the Examiner’s reasoning into eleven reasons (Reply Br. 5) and set forth four arguments as to why none of the eleven reasons articulated by the Examiner “would motivate a [person having ordinary skill in the art or] PHOSITA to combine Haeffele and Köster. Reply Br. 5. In particular, Appellants argue that a person of ordinary skill in the art would not modify Haeffele: for reasons (1), (2), (5)-(8), because Haeffele already has these attributes (Reply Br. 5-6); for reason (11), because there is no evidence that the combination of Haeffele and Köster would produce this Appeal 2010-006705 Application 11/097,392 8 result; for reason (3), because of Haeffele’s discussion of later-bending problems; and for reasons (4), (9), and (10), because the combination would result in increased, not decreased costs (Reply Br. 5-7). We are not persuaded of Examiner error by Appellants’ arguments. Initially, we note that reasons (1)-(4) of the eleven reasons identified by Appellants are not, in fact, reasons articulated by the Examiner to explain why a person of ordinary skill in the art would modify Haeffele by Köster. Rather, they are explanations provided by the Examiner as to how the Examiner proposes to modify Haeffele by Köster. As such, Appellants’ arguments with respect to why reasons (1)-(4) would not motivate a person of ordinary skill in the art to modify Haeffele by the teachings of Köster are unpersuasive because the Examiner did not modify Haeffele by the teachings of Köster for these reasons. Furthermore, with respect to reasons (5)-(11) as identified by Appellants, we note that modifying Haeffele to be without a machine room, to have guide rails arranged on the side of the elevator car, and to have one end of the hoisting ropes be substantially immovably fastened to the elevator car by the teachings of Köster as proposed by the Examiner would reduce spatial requirements. Indeed, Köster’s elevator is disclosed as having “a very compact type of construction, in which case, in particular, all components may be accommodated in the elevator shaft itself.” Köster, col. 2, ll. 47-50. Thus, despite Appellants attack on the Examiner’s reasons (5)-(11) for combining Haeffele and Köster, and further arguments with respect to commonality (Reply Br. 7-8), feasibility (Reply Br. 8-9), the Examiner’s admissions (Reply Br. 9-10), and the Examiner’s improper characterizations (Reply Br. 12-14), we conclude that the Examiner’s articulated reason for combining Appeal 2010-006705 Application 11/097,392 9 Haeffele and Köster has rational underpinning since Köster’s elevator has space saving features. See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.”). Accordingly, we sustain the Examiner’s rejection of independent claim 1, and claims 3, 7-12, and 25 falling therewith, under 35 U.S.C. § 103(a) as unpatentable over Haeffele and Köster. Rejections (2)-(9) – Obviousness based on Haeffele and Köster in combination with any of Arnoult, Wittur, Vanhala, Dambre, Baranda ʼ589, Kato, Baranda ʼ589 together with Kato, and Baranda ʼ324, respectively Appellants argue that none of Arnoult, Wittur, Vanhala, Dambre, Baranda ʼ589, Kato, Baranda ʼ589 together with Kato, and Baranda ʼ324, respectively, cure the deficiencies of the combination of Haeffele and Köster. App. Br. 35-38. As we found no deficiency in the combination of Haeffele and Köster for the reasons discussed supra, we sustain the Examiner’s rejections, under 35 U.S.C. § 103(a), of: claims 4 and 5 as unpatentable over Haeffele, Köster, and Arnoult; claims 13, 15, 18, and 23 as unpatentable over Haeffele, Köster, and Wittur; claim 14 as unpatentable over Haeffele, Köster, and Vanhala; claim 16 as unpatentable over Haeffele, Köster, and Dambre; claim 17 as unpatentable over Haeffele, Köster, and Baranda ʼ589; claims 19, 20, and 24 as unpatentable over Haeffele, Köster, and Kato; claim 22 as unpatentable over Haeffele, Köster, Baranda ʼ589, and Kato; and claim 21 as unpatentable over Haeffele, Köster, and Baranda ʼ324. Appeal 2010-006705 Application 11/097,392 10 DECISION We affirm the Examiner’s decision to reject claims 1, 3-5, and 7-25. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(1)(iv). AFFIRMED Klh