OTIS ELEVATOR COMPANY

Patent Trials and Appeals Board

Sep 29, 2020

2019006330 (P.T.A.B. Sep. 29, 2020)

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.
15/101,145 06/02/2016 Tadeusz Witczak 71614US01 (U320516US) 1980
87423 7590 09/29/2020
Cantor Colburn LLP - Otis Elevator
INTELLECTUAL PROPERTY DEPARTMENT
20 Church Street, 22nd Floor
Hartford, CT 06103
EXAMINER
UHLIR, CHRISTOPHER J
ART UNIT PAPER NUMBER
2837
NOTIFICATION DATE DELIVERY MODE
09/29/2020 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
frederic.tenney@otis.com
usptopatentmail@cantorcolburn.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte TADEUSZ WITCZAK, DARYL J. MARVIN,
and ZBIGNIEW PIECH

Appeal 2019-006330
Application 15/101,145
Technology Center 2800
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and
JEFFREY R. SNAY, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL

Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as OTIS
ELEVATOR COMPANY. (Appeal Br. 1.)
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STATEMENT OF THE CASE
Claim 1 illustrates the subject matter on appeal and is reproduced
below:
1. A ropeless elevator system comprising:

a plurality of hoistways in which a plurality of elevator cars
circulate to a plurality of floors, each hoistway assigned to a
respective single direction of travel for the elevator cars,
wherein the single direction of travel is either upward or
downward, wherein a first quantity of upward hoistways is
unequal to a second quantity of downward hoistways, and
wherein a speed of each of the plurality of elevator cars in the
upward hoistways is greater than a speed of each of the
plurality of elevator cars in the downward hoistways;

wherein the speed of each of the plurality of elevator cars in the
upward hoistways and the speed of each of the plurality of
elevator cars in the downward hoistways is responsive to the
assigned respective single direction for each hoistway.

Appeal Br. 11, Claims Appendix.

The following rejections are presented for our review:
I. Claims 1–7 and 9–15 rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Duenser ’376 (US 7,621,376 B2,
Nov. 24, 2009) in view of Allwardt (US 2010/0133046 A1, June 3, 2010).
II. Claims 16 and 18–20 rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Duenser ’089 (US 7,537,089 B2,
May 26, 2009) in view of Okada (US 6,360,847 B1, Mar. 26, 2002).
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III. Claim 8 rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Duenser ’376, Allwardt, and Duenser ’089.
IV. Claim 17 rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Duenser ’089, Okada, and Duenser ’376.
OPINION
After review of the respective positions provided by Appellant and the
Examiner, we AFFIRM the Examiner’s rejections under 35 U.S.C. § 103.2
We consider the record to determine whether Appellant has identified
reversible error in the Examiner’s rejection. See In re Jung, 637 F.3d 1356,
1365 (Fed. Cir. 2011) (“[I]t has long been the Board’s practice to require an
applicant to identify the alleged error in the examiner’s rejections . . . .”
(citing Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential))).

Rejection I
Claims 1–7 and 9–15 rejected under 35 U.S.C. § 103 as unpatentable
over the combination of Duenser ’376 and Allwardt.
We sustain the rejection because we discern no reversible error in the
Examiner’s obviousness determination. We add the following for emphasis
only.

2 The complete statement of the rejection on appeal appears in the Final
Office Action. (Final Act. 3–14.)
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Claims 1–7 and 93
The Examiner finds Duenser ’376 teaches a ropeless elevator system
comprising a plurality of hoistways in which a plurality of elevator cars
circulate to a plurality of floors as required by the claimed invention. The
Examiner finds Duenser ’376 fails to disclose the speed of each of the
plurality of elevator cars in the upward and downward hoistways. (Final
Act. 3.) The Examiner finds Allwardt teaches an elevator system where the
speed of the elevator cars is assigned responsive to the elevator traffic and
the direction of travel. (Final Act. 3.) The Examiner finds Allwardt
discloses the speed of the elevator cars is adjusted to assure readiness to
respond to elevator calls as quickly as possible. (Final Act. 4; Allwardt
¶ 1218.) The Examiner determined it would have been obvious for a person
of ordinary skill in the art to assign the speed of the elevator cars in the
upward and downward hoistways as specified by the claimed invention.
(Final Act. 4.)
Appellant argues that the combination of Duenser ’376 and Allwardt
does not teach or suggest a system where speed of elevator cars is responsive
to an assigned respective single direction for a hoistway as required in claim
1. (Appeal Br. 4–6.) Appellant argues Allwardt is a roped elevator system
and therefore the elevator cars travel in both directions in the hoistway not
only in a single direction. (Appeal Br. 5.) Appellant further argues the
speed of the elevator cars described in Allwardt is contrary to the claimed

3 We limit our discussion to the independent claim 1 as argued by Appellant.
37 C.F.R. § 41.37(c)(1)(iv). Claims 2–7 and 9 stand or fall with independent
claim 1.
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invention that requires the elevator cars traveling upward to travel faster than
the downward traveling elevator cars. (Appeal Br. 6.)
Appellant’s arguments lack persuasive merit. The claims are
“system” claims, but in order to be patentable the subject matter of a claim
must fit into one and only one of the statutory claims of invention enunciated
in 35 U.S.C. § 101, i.e., a process, machine, manufacture, or composition of
matter. Claims cannot be directed to combinations of those classes of
invention. See IPXL Holdings, L.L.C. v. Amazon.com, Inc., 430 F.3d 1377,
1384 (Fed. Cir. 2005) (claims to a combination of statutory claims of
invention are not permitted and are indefinite).
We interpret the system claims as directed to an apparatus, i.e., a
structure which can be termed a machine or manufacture under 35 U.S.C.
§ 101. Claims directed to an apparatus must be distinguished from the prior
art in terms of structure. See In re Danly, 263 F.2d 844, 848 (CCPA 1959)
(“Claims drawn to an apparatus must distinguish from the prior art in terms
of structure rather than function.”); In re Gardiner, 171 F.2d 313, 315–16
(CCPA 1948) (“It is trite to state that the patentability of apparatus claims
must be shown in the structure claimed and not merely upon a use, function,
or result thereof.”). Choosing to define an element functionally, i.e., by
what it does, carries with it a risk: Where there is reason to conclude that the
structure of the prior art is inherently capable of performing the claimed
function, the burden shifts to the applicant to show that the claimed function
patentably distinguishes the claimed structure from the prior art structure.
See In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir. 1997); In re Hallman,
655 F.2d 212, 215 (CCPA 1981).
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The claim invention is directed to a ropeless elevator system
comprising a plurality of hoistways in which a plurality of elevator cars
circulate to a plurality of floors. Appellant has not refuted the Examiner’s
position that the structure of Duenser ’376 meets the structural requirements
of the claimed ropeless elevator system. The claim language “wherein a
speed of each of the plurality of elevator cars in the upward hoistways is
greater than a speed of each of the plurality of elevator cars in the downward
hoistways” describes the method of operation of the ropeless elevator system
and does not structurally distinguish the invention.
Notwithstanding the above, the Examiner correctly determined that
adjusting operational conditions including the speed at which the elevator
cars travel in the hoistways would have been obvious to a person of ordinary
skill in the art. Specifically, the Examiner cites Allwardt discloses the speed
of the elevator cars is adjusted to assure readiness to respond to elevator
calls as quickly as possible. (Final Act. 4; Allwardt ¶ 1218.) Allwardt
discloses a central control is utilized to optimize the operation of the elevator
cars. (Allwardt ¶ 1218.) A person of ordinary skill in the art would have
reasonably expected that the elevator system of Duenser ’376 operates
utilizing a central control system to regulate the operation of the individual
elevator cars. A person of ordinary skill in the art would have had sufficient
skill to determine the appropriate speed for the elevator cars traveling in the
upward and downward directions. See KSR Int’l. Co. v. Teleflex Inc., 550
U.S. 398, 418 (2007) (In making an obviousness determination one “can
take account of the inferences and creative steps that a person of ordinary
skill in the art would employ.”); In re Venner, 262 F.2d 91, 95 (CCPA 1958)
(explaining that the provision of “automat[ed] means to replace manual
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activity which has accomplished the same result” is well within the ambit of
one of ordinary skill in the art); see also Soverain Software LLC v. Newegg
Inc., 705 F.3d 1333, 1344 (Fed. Cir. 2013) (concluding that claims directed
to an online shopping system were invalid as obvious given that the patentee
“did not invent the Internet, or hypertext, or the URL” and using hypertext to
communicate transaction information was no more than “a routine
incorporation of Internet technology into existing processes”), amended on
reh’g, 728 F.3d 1332 (Fed. Cir. 2013).

Claims 10–154
Independent claim 10 is directed to a method for dispatching a
plurality elevator cars within a plurality of hoistways and an elevator system.
Appellant’s arguments for patentability are the same as those that
were presented for independent claim 1. (Appeal Br. 6–8.)
These arguments are not persuasive for the reasons set forth above.

Rejection II
Claims 16 and 18–20 are rejected under 35 U.S.C. § 103 as
unpatentable over the combination of Duenser ’089 and Okada.5
The Examiner finds Duenser ’089 teaches a ropeless elevator system
comprising a plurality of hoistways in which a plurality of elevator cars
circulate to a plurality of floors as required by the claimed invention. The

4 We limit our discussion to the independent claim 10 as argued by
Appellant.
5 We limit our discussion to the independent claim 16 as argued by
Appellant. 37 C.F.R. § 41.37(c)(1)(iv). Claims 18–20 stand or fall with
independent claim 16.
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Examiner finds Duenser ’089 fails to disclose the speed of each of the
plurality of elevator cars in the upward and downward hoistways. (Final
Act. 3.) The Examiner finds Okada teaches an elevator system where the
speed of the ascending/descending elevator cars is regulated. (Final Act.
10.) The Examiner determined it would have been obvious for a person of
ordinary skill in the art to assign the speed of the elevator cars in the upward
and downward hoistways as specified by the claimed invention. (Final Act.
10.)
Appellant argues that the combination of Duenser ’089 and Okada
does not teach or suggest a system where speed of elevator cars is responsive
to an assigned respective single direction for a hoistway as required in claim
16. (Appeal Br. 8–9.) Appellant argues Okada is a roped elevator system
and therefore the elevator cars travel in both directions in the hoistway not
only in a single direction. (Appeal Br. 9.)
The thrust of Appellant’s arguments for the combination of Duenser
’089 and Okada is the same as those presented for the combination of
Duenser ’376 and Allwardt addressed above. Independent claim 16 is
directed to a ropeless elevator system. Appellant has not refuted the
Examiner’s position that the structure of Duenser ’089 meets the structural
requirements of the claimed ropeless elevator system.

Rejections III and IV
Claim 8 is rejected under 35 U.S.C. § 103 as unpatentable over the
combination of Duenser ’376, Allwardt, and Duenser ’089; and claim 17 is
rejected under 35 U.S.C. § 103 as unpatentable over the combination of
Duenser ’089, Okada, and Duenser ’376.
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Regarding the rejections of claims 8 and 17, we sustain these
rejections advanced by the Examiner. Appellant has only presented
arguments as to independent claims 1 and 16 (rejections discussed above)
and has not otherwise presented separate arguments on the merits for the
rejections of claims 8 and 17. In this regard, Appellant does not assert non-
obviousness based on the additional limitations set forth in claims 8 and 17
subject to these rejections by explaining how the additional references
applied thereto by the Examiner fail to establish the obviousness of the
additional features recited in these separately rejected dependent claims.
Because we do not find Appellant’s arguments persuasive as to independent
claims 1 and 16, it follows that these arguments are unpersuasive as to
claims 8 and 17.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–7, 9–15 103 Duenser ’376,
Allwardt
1–7, 9–15
16, 18–20 103 Duenser ’089,
Okada
16, 18–20
8 103 Duenser ’376,
Allwardt, Duenser
’089
8
17 103 Duenser ’089,
Okada, Duenser
’376
17
Overall
outcome
1–20

Appeal 2019-006330
Application 15/101,145

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TIME PERIOD FOR RESPONSE
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