Ex Parte Tonna et al

Patent Trial and Appeal Board

Jan 16, 2013

11397457 (P.T.A.B. Jan. 16, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte CHRISTIAN G. TONNA, HELMUT SCHRÖDER-BRUMLOOP,
and CHRISTOPH DURAND
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Appeal 2010-011268
Application 11/397,457
Technology Center 3600
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Before: STEFAN STAICOVICI, MICHELLE R. OSINSKI, and
NEIL T. POWELL, Administrative Patent Judges.

POWELL, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2010-011268
Application 11/397,457

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STATEMENT OF THE CASE

Appellants1 seeks our review under 35 U.S.C. § 134 of the rejection of
claims 63-73. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

The Claimed Subject Matter
Independent claim 63, reproduced below, is representative of the
appealed subject matter:
63. An elevator car assembly, comprising:
a cabin having a door opening on at least a front face with a
portion of the front face between a top of the door opening and a top
of the cabin;
a door track supported adjacent the front face between the top
of the door opening and the top of the cabin;
at least one elevator door that is supported by a door hanger that
is moveable along the door track for movement between an open
position exposing the door opening and a closed position covering the
door opening, the hanger having at least one roller that follows the
door track during door movement;
a drive belt;
a plurality of sheaves supported adjacent the portion of the front
face such that the sheaves are between the top of the door opening and
the top of the cabin, the sheaves being distinct from the roller, the
drive belt engaging an exterior surface of the sheaves such that the at
least one door moves responsive to rotation of the sheaves, the
sheaves each rotating about an axis of rotation perpendicular to a
direction of movement of the least one elevator door; and
a drive motor that is at least one of
(i) supported on or
(ii) supported at least partially within a periphery of

1 Appellants identify the real party in interest as Otis Elevator Company.
App. Br. 1.
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Application 11/397,457

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at least one of the sheaves such that the entire drive motor is
adjacent the portion of the front face and between the top of the door
opening and the top of the cabin.

The Rejection
Appellants seek review of the rejection of claims 63-73 under 35
U.S.C. § 103(a) as unpatentable over Borden (US 2,905,463, iss. Sept. 22,
1959), Parente (US 4,503,637, iss. Mar. 12, 1985), and Sukale (US
5,852,897, iss. Dec. 29, 1998).2 Ans. 3.

ANALYSIS
The Examiner finds that Borden discloses an elevator car assembly
that meets most of the limitations of independent claim 63 but does not have
the drive motor positioned “adjacent the portion of the front face and
between a top of the door opening and a top of the cabin.” Ans. 3-4. The
Examiner finds that Parente discloses a drive motor so positioned. Id. at 4.
The Examiner concludes that it would have been obvious to modify
Borden’s elevator to have its drive motor in the position disclosed by
Parente “for compactness and esthetics.”3 Id.
Appellants argue that the Examiner’s combination of Parente with
Borden stems from improper hindsight reconstruction. App. Br. 4-5 and 7-9.

2 The Examiner had finally rejected claim 63 on the ground of nonstatutory
obviousness-type double patenting, but that rejection is moot in view of the
Terminal Disclaimer, filed February 23, 2010. Ans. 2; Final Rejection,
mailed December 9, 2009, at 2.
3 The Examiner does not rely on Sukale for his conclusion that it would have
been obvious to position the drive motor “adjacent the portion of the front
face and between a top of the door opening and a top of the cabin.” See Ans.
3-11.
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Appellants argue that Parente does not teach that its disclosed arrangement
provides the advantage of compactness. Id. at 8. Instead, Appellants assert,
Parente “focuses on having a building door assembly that is structurally
sound, allows for repair and replacement of parts and is adjustable because
of building distortion and changes in function over time.” Id. Appellants
further argue that concerns about aesthetics would not constitute a reason to
modify the position of Borden’s drive motor based on Parente, as people
generally would not see the door-drive system of Borden, making aesthetics
of no concern in the configuration of the door-drive system. Id. Based on
these assertions, Appellants argue that the Examiner’s reason for looking to
Parente stems from Appellants’ disclosure that the claimed location of a
motor makes an elevator more compact. Id.
In response to Appellants’ arguments, the Examiner advances that:
the teachings of Parente - compactness,
functionality and esthetics - are reasonable
interpretations in view of a comparison of drive
components and layouts of the respective
disclosures. As noted by Appellant, the
specification of Parente reviews " ... a building
door assembly that is structurally sound, allows for
repair and replacement parts and is adjustable ... ",
for which Examiner has drawn similar teachings
with respect to functionality and compactness,
therein fewer drive components, wherein said
drive components are mounted on a front face of
an elevator car. Said teachings afford compactness
without compromising servicing and replacement
of wear components, the latter of interest in view
of the superfluous, antiquated drive components of
Borden and probable concerns for contemporary
sourcing of spare parts as well.
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Ans. 10. In response to Appellants’ argument that the hidden nature of the
door-drive system obviates any need to modify it for aesthetic reasons, the
Examiner advances that Appellants have not considered aesthetics concerns
for “parties involved in the critique and selection of elevator systems or
technical service personnel servicing said systems.” Id.
Consistent with Appellants’ arguments, the Examiner does not
provide viable support that it would have been obvious, independent of
Appellants’ disclosure, to modify Borden based on Parente for compactness
and aesthetics. The Examiner does not point to any specific portion of
Parente that explicitly or implicitly discloses any concern with
“compactness.” Nor does the Examiner clearly explain how Parente’s
disclosures related to adjustment, repair, and structural integrity of its system
would have given a person of ordinary skill in the art a reason to modify the
location of the drive motor in Borden’s system for “compactness” or any
other reason. Additionally, without any objective evidence that a person of
ordinary skill in the art would consider the appearance of an elevator door-
drive, we cannot adopt the Examiner’s position that aesthetic considerations
would have given the person of ordinary skill in the art an adequate reason
to combine the teachings of the references.
Without a persuasive articulated rationale based on rational
underpinning for combining the references as proposed, the Examiner's
rejection appears to be the result of hindsight analysis. See In re Kahn, 441
F.3d 977, 988 (Fed. Cir. 2006) (cited with approval in KSR, 550 U.S. at 418)
(“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”).
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Therefore, absent hindsight, we fail to see why one having ordinary skill in
the art would have been led to modify Borden based on Parente, as the
Examiner proposes. Accordingly, we cannot sustain the Examiner’s
rejection of independent claim 63 and claims 64-73 depending therefrom.

DECISION
We reverse the Examiner’s decision regarding claims 63-73.

REVERSED
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