Ex Parte Nardi et alDownload PDFPatent Trial and Appeal BoardAug 8, 201613141720 (P.T.A.B. Aug. 8, 2016) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/141,720 06/23/2011 87423 7590 08/10/2016 Cantor Colburn LLP - Otis Elevator INTELLECTUAL PROPERTY DEPARTMENT 20 Church Street, 22nd Floor Hartford, CT 06103 FIRST NAMED INVENTOR Aaron T. Nardi 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 ATTORNEY DOCKET NO. CONFIRMATION NO. PA0008584U-U72.12-84KL 6853 EXAMINER ZIMMERMAN, JOHN J ART UNIT PAPER NUMBER 1784 NOTIFICATION DATE DELIVERY MODE 08/10/2016 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): usptopatentmail @cantorcolburn.com frederic.tenney@otis.com frederic.tenney@otis.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PA TENT TRIAL AND APPEAL BOARD Ex parte AARON T. NARDI, 1 James T. Beals, Wayde R. Schmidt, Gregory S. Welsh, and Mark Steven Thompson Appeal2015-001745 Application 13/141,720 Technology Center 1700 Before ROMULO H. DELMENDO, MARK NAGUMO, and JULIA HEANEY, Administrative Patent Judges. NAGUMO, Administrative Patent Judge. DECISION ON APPEAL Aaron T. Nardi, James T. Beals, Wayde R. Schmidt, Gregory S. Welsh, and Mark Steven Thompson ("Nardi") timely appeal under 35 U.S.C. § 134(a) from the Final Rejection2' 3 of claims 1-3, 6-12, 1 The real party in interest is identified as Otis Elevator Company. (Appeal Brief, filed 28 July 2014 ("Br."), 1.) 2 Office action mailed 28 February 2014. ("Final Rejection"; cited as "FR"). 3 The claims on appeal include amendment to claim 11, filed under 37 C.F.R. § 116 (1 July 2014), entered in an Advisory Action (25 July 2014). Appeal2015-001745 Application 13/141,720 14, and 15, which are all of the pending claims. We have jurisdiction. 35 U.S.C. § 6. We affirm for reasons well-stated by the Examiner. OPINION A. Introduction4 The subject matter on appeal relates to a coated traction sheave used in an elevator system. The '720 Specification explains that a conventional traction elevator system, illustrated in Fig. 1, infra, typically comprises a 12~ 16 .l4 {Fig. 1 (left) shows an elevator system with sheave 245} {Fig. 2 (right) shows sheave 24 and rope 22} 4 Application 13/141,720, Wear and friction control of metal rope and sheave interfaces, filed 23 June 2011, as the national stage under 35 U.S.C. § 371 of PCT/US2008/013994, which was filed 23 December 2008. We refer to the '"720 Specification," which we cite as "Spec." 5 Throughout this Opinion, for clarity, labels to elements are presented in bold font, regardless of their presentation in the original document. 2 Appeal2015-001745 Application 13/141,720 car 14 connected by tension member ("rope") 22, to counterweight 16. (Spec. 1, 11. 6-8.) The traction member passes over traction sheave 24, which moves the ropes (id. at 1. 8), and which may apply tension to the ropes to actuate safeties on the elevator (id. at 11. 18-20). According to the Specification, the ropes are formed from laid or twisted steel wire, while the sheave is formed from cast iron. (Id. at 11. 12-14.) The '720 Specification reveals that proper functioning of the elevator system depends on traction forces between the rope and the sheave. (Id. at 11. 28-30.) According to the Specification, various methods are known to increase the traction force, including providing synthetic friction liners that also minimize the wear of the ropes and the sheave. (Id. at 1. 30, to 2, 1. 2.) In the words of the Specification, "[t]he present invention places a coating [2 7] on the sheave body on at least the portion of the sheave body that is to engage the friction element. The coating provides a wear coefficient on the sheave body of less than 2.0 x 10-10 mm2/N." (Id. at 2, 11. 99-22 (as amended 16 September 2013.) The Specification teaches that the wear coefficient K relates the volume V of wear debris from the sheave surface as it is subjected to a load P over a distance D: V=KPD· ' K = V/(PD) (id. at 4, 11. 24-28; 5, 1. 33-6, 1. 2). 3 Appeal2015-001745 Application 13/141,720 Claim 1 is representative of the dispositive issues and reads: A coated elevator system component that interacts with a friction component, the coated component comprising: a body having a predetermined shape and size for engagement with at least one friction element in the elevator system; and a coating on the body having a wear coefficient of less than 2.0 x Jo-10 mm2/N, wherein the coating is selected from the group consisting of cobalt alloys having a chromium component, molybdenum, cobalt phosphorus and nickel tungsten alloys, and wherein the thickness of the coating on the body ranges from about 0.1 mm to about 1.25 mm. (Claims App., Br. 7; some indentation, paragraphing, and emphasis added.) The Examiner maintains the following ground of rejection6 : Claims 1-3, 6-12, 14, and 15 stand rejected under 35 U.S.C. § 103(a) in view of the teachings of Aoki7 Ach,8 or Kikuchi, 9 combined with the teachings of Dietle, 10 evidenced by specific disclosures of wear coefficient properties in the '720 Specification. 6 Examiner's Answer mailed 12 September 2014 ("Ans."). 7 Hidekazu Aoki et al., Manufacture of sheave for winding machine, JP 01- 250670 (1989) (Patent Abstracts of Japan JPO Abstract). 8 Ernst Ach, Elevator installation with drivebelt pulley and jlat-beltlike suspension means, U.S. Patent Application Publication 2007/0062762 Al (2007). 9 Masaaki Kikuchi et al., Elevator use speed adjusting device, JP 04-007284 (1992) (USPTO translation). 10 Lannie Dietle and Jeffrey D. Gobeli, High pressure rotary shaft sealing mechanism, U.S. Patent No. 6,227,547 Bl (2001). 4 Appeal2015-001745 Application 13/141,720 B. Discussion Findings of fact throughout this Opinion are supported by a preponderance of the evidence of record. Nardi presents substantive arguments solely for the patentability of independent claim 1; the arguments regarding remaining independent claim 11 (Br. 5, last para.) are cumulative. Accordingly, all claims stand or fall with claim 1. Briefly, the Examiner finds that it would have been obvious to apply Stellite compositions (i.e., cobalt alloys having a chromium component) taught by Dietle as hard wear coatings equivalent to nickel, cobalt, TiC, Teflon®, or diamond coatings, to the coated sheaves described by Aoki, Ach, or Kikuchi. (FR 3--4.) Nardi urges the Examiner erred in failing to give proper weight to the limitation that the "coating on the body hav[ e] a wear coefficient of less than 2.0 x 10-10 mm2/N." (Br., para. bridging 3--4.) In particular, according to Nardi, "[a]pplying the coating does not address the variables of volume, load and sliding distance that contribute to the wear coefficient. Thus, a sheave having a Stellite coating may have widely varying wear coefficients depending upon the volume, load, and sliding distance." (Br. 4, last para.) Nardi concludes that a component having a Stellite coating will not inherently, as proposed by the Examiner, have a wear coefficient of less than 2.0 x io- 10 mm2/N as required by claim 1. (Id. at 5, 11. 1-3.) As the Examiner points out (Ans. 6, 1st full para.), a difficulty with Nardi' s argument that the value of the wear coefficient is a function of the material and the conditions of the test, is that no parameters of the testing 5 Appeal2015-001745 Application 13/141,720 conditions are recited in the claims (id. at 8). Moreover, as the Examiner finds, the Specification "does not disclose that any particular coating methods or post treatments are necessary to satisfy the claimed [sic: required] wear coefficient." (Id. at 9, 11. 8-10.) It is well-settled that patentability may not be established based on limitations not recited in the claims. In re Self, 671F.2d1344, 1348 (CCPA 1982) ("Many of appellant's arguments fail from the outset because ... they are not based on limitations appearing in the claims.") To the extent that Nardi's arguments may be construed as arguments for patentability based on unexpected results, although Table I does show improvements by factors ranging from about five to about twelve for the four coatings reported compared to cast iron, there are no comparisons with any of the prior art liners reported. Thus, evidence of record does not indicate whether the improvement is unexpected. Moreover, the four examples presented are not commensurate in scope with the claimed subject matter. We therefore affirm the rejections of record. C. Order It is ORDERED that the rejection of claims 1-3, 6-12, 14, and 15 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § l.136(a). AFFIRMED 6 Copy with citationCopy as parenthetical citation