Ex Parte PELTO-HUIKKO et al

Patent Trials and Appeals BoardMar 12, 2019

14264628 - (D) (P.T.A.B. Mar. 12, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 14/264,628 04/29/2014 Raimo PELTO-HUIKKO 127226 7590 03/14/2019 BIRCH, STEW ART, KOLASCH & BIRCH, LLP 8110 Gatehouse Road Suite 100 East Falls Church, VA 22042-1248 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. 1381-0537PUS 1 1018 EXAMINER MANSEN, MICHAEL R ART UNIT PAPER NUMBER 3654 NOTIFICATION DATE DELIVERY MODE 03/14/2019 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): mailroom@bskb.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Exparte RAIMO PELTO-HUIKKO, PETTER! V ALWS, and PENTTI ALASENTIE Appeal2017-007283 Application 14/264,628 1 Technology Center 3600 Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and CYNTHIA L. MURPHY, Administrative Patent Judges. HOFFMANN, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. Â§ 134(a), Appellants appeal from the Examiner's rejection of claims 1-20. We have jurisdiction under 35 U.S.C. Â§ 6(b ). Although they requested an oral hearing, Appellants subsequently waived the hearing. See Response to Notice of Hearing 2, filed March 4, 2019. 1 Appellants identify "KONE CORPORATION" as the real party in interest. Appeal Br. 1. Appeal2017-007283 Application 14/264,628 We REVERSE. According to Appellants, "[t]he invention relates to a method for manufacturing a rope and a rope manufactured with the method. The rope is[,] in particular[,] a rope of an elevator meant for transporting passengers and/or goods." Spec. 1, 11. 4---6. Below, we reproduce independent claim 1 as illustrative of the appealed claims. 1. A method for manufacturing a rope comprising the steps of: providing at least one pre-manufactured elongated load bearing member for the rope and at least one pre-manufactured elongated surface part for the rope, the at least one pre- manufactured elongated surface part including a groove to receive the at least one pre-manufactured elongated load bearing member; guiding together said at least one pre-manufactured elongated load bearing member and said at least one pre- manufactured elongated surface part such the at least one pre- manufactured elongated load bearing member is received in the groove and that their sides lean against each other; and fixing said at least one pre-manufactured elongated load bearing member and said at least one pre-manufactured elongated surface part to each other. REJECTIONS AND PRIOR ART The Examiner rejects the claims as follows: I. Claims 1, 5, and 9-18 under 35 U.S.C. Â§ I02(a)(l) as anticipated by Wesson et al. (US 2011/0240408 Al, pub. Oct. 6, 2011) (hereinafter "Wesson"); 2 Appeal2017-007283 Application 14/264,628 II. Claims 2, 3, 6-8, and 19 under 35 U.S.C. Â§ 103(a) as unpatentable over Wesson and Marsh et al. (US 4,448,621, iss. May 15, 1984) (hereinafter "Marsh"); and III. Claims 4 and 20 under 35 U.S.C. Â§ 103(a) as unpatentable over Wesson, Marsh, and Douhairet et al. (US 5,147,253, iss. Sept. 15, 1992) (hereinafter "Douhairet"). ANALYSIS Reiection I As set forth above, independent claim 1 recites the following: 1. A method for manufacturing a rope comprising the steps of: providing at least one pre-manufactured elongated load bearing member for the rope and at least one pre-manufactured elongated surface part for the rope, the at least one pre- manufactured elongated surface part including a groove to receive the at least one pre-manufactured elongated load bearing member; guiding together said at least one pre-manufactured elongated load bearing member and said at least one pre- manufactured elongated surface part such the at least one pre- manufactured elongated load bearing member is received in the groove and that their sides lean against each other; and fixing said at least one pre-manufactured elongated load bearing member and said at least one pre-manufactured elongated surface part to each other. Appeal Br., Claims App. ( emphases added). The method claim requires that the surface part includes a groove prior to guiding together the load bearing member and the surface part, and prior to fixing the load bearing member and surface part to each other. See id. at 2-5, 7-8. This is consistent with 3 Appeal2017-007283 Application 14/264,628 Appellants' Specification and drawings, which describe and illustrate such a surface part that includes a groove to receive a load bearing member, the surface part's groove existing prior to guiding together the load bearing member and the surface part, and prior to joining the load bearing member and the surface part to each other. See, e.g., Spec. 10, 1. 2-11, 1. 14; Figs. 1, 2. Appellants argue that the Examiner errs, as it appears that the Examiner is treating these claims as apparatus claims instead of method claims because, in the final forms of Wesson, the additional material fills in the gaps between individual combinations of tensioning member 32 and jacket material 34. However, as noted above, the claims are directed to a method for manufacturing a rope that requires providing a pre- manufactured surface having grooves. Appeal Br. 8. Based on our review of the record, we agree with Appellants, and, therefore, we do not sustain the rejection. Specifically, the Examiner does not cite any portion of Wesson illustrating or describing jackets 34 ( on which the Examiner relies to disclose the claimed "pre-manufactured elongated load bearing member") as being received in a groove in jacket material 40 ( on which the Examiner relies to disclose the claimed "pre-manufactured elongated surface part"), where the groove exists prior to guiding together jackets 34 and jacket material 40, and prior to joining jackets 34 and jacket material 40 to each other. See, e.g., Answer 2-3. It is not sufficient that Wesson discloses that jacket material 40 "is secured to" jackets 34. Id. at 4 ( citing Wesson ,r 28) (internal quotations omitted). This is because, for example, Wesson's Figures 7 and 8 may illustrate an injection-molding jacket material 40 onto jackets 34 that are already connected to one another. In such an instance, to 4 Appeal2017-007283 Application 14/264,628 the extent that jacket material 40 includes a groove, the groove is formed when guiding together jackets 34 and jacket material 40, and during joining of jacket material 40 and jackets 34 to each other-i.e., jacket material 40 does not include a groove prior to guiding together and joining of jackets 34 and jacket material 40, as recited in the method claim. Thus, based on the foregoing, we do not sustain claim 1 's anticipation rejection. We also do not sustain the rejection of claims 5 and 9-18, which depend from or otherwise incorporate the above-discussed recitations of claim 1, and which the Examiner rejects based on a similar rationale as claim 1. Reiections II and III Claims 2--4, 6-8, 19, and 20 depend from claim 1. Appeal Br., Claims App. The Examiner does not rely on Marsh or Douhairet to remedy the above-discussed deficiency in claim 1 's rejection. Therefore, we do not sustain either obviousness rejection of these dependent claims. DECISION We REVERSE the Examiner's rejections of claims 1-20. REVERSED 5