Ex Parte Polak et al

Patent Trial and Appeal Board

Nov 26, 2018

13980621 (P.T.A.B. Nov. 26, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/980,621 07/19/2013
87423 7590 11/28/2018
Cantor Colburn LLP - Otis Elevator
INTELLECTUAL PROPERTY DEPARTMENT
20 Church Street, 22nd Floor
Hartford, CT 06103
FIRST NAMED INVENTOR
David R. Polak
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.
56929US01 (U320029US) 8261
EXAMINER
RIEGELMAN, MICHAEL A
ART UNIT PAPER NUMBER
3654
NOTIFICATION DATE DELIVERY MODE
11/28/2018 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 PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID R. POLAK, CHRISTOPHER T. CHIPMAN,
CHARLES C. COFFIN, ARTHUR BLANC,
JOHN P. WESSON, YAN CHEN, DANIEL G. OPOKU, and
SERGEI F. BURLATSKY
Appeal 2018-001858
Application 13/980,621
Technology Center 3600
Before: CHARLES N. GREENHUT, GEORGE R. HOSKINS, and
ARTHUR M. PESLAK, Administrative Patent Judges.
GREENHUT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1, 3-5, 7-10, 12, 13, 15-17, 19 and 28-30. We have jurisdiction under 35
U.S.C. § 6(b).
We affirm-in-part.
Appeal 2018-001858
Application 13/980,621
CLAIMED SUBJECT MATTER
The claims are directed to a system and method for reducing belt
noise. Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1 An elevator system, comprising:
an elevator car;
a counterweight;
at least one belt connecting the car and counterweight; and
at least one sheave having at least one surface for
engagement with the at least one belt;
wherein said at least one belt is flat and at least part of the
at least one surface has a plurality of features thereon configured
to interact with the belt for reducing unwanted noise from
interaction between the surface and the at least one belt;
wherein the plurality of features comprises at least one of
indentations or projections.
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Williams
Perron
GB 168,043
US 2008/0289912 Al
REJECTIONS
Aug. 17, 1922
Nov. 27, 2008
Claims 3, 4, 10, 15, 16, and 29 are rejected under 35 U.S.C. § 112,
second paragraph, as being indefinite.
Claims 1, 3-5, 7-10, 12, 13, 15-17, 19 and 28-30 are rejected under
35 U.S.C. § I03(a) as being unpatentable over Perron and Williams.
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Application 13/980,621
OPINION
Indefiniteness
The indefiniteness rejection concerns the imprecision of the term
"about" as it is used to define the ranges recited in the claims rejected under
section§ 112, second paragraph. According to the Examiner, the
Specification lacks sufficient guidance so as to determine the degree of
imprecision allowed by the use of the word "about." Final Act. 2-3. As
Appellants correctly point out, there is no general requirement for reciting
exact range limitations. App. Br. 4--5. However, as the Examiner correctly
points out, in certain instances the term "about" has been held to introduce
sufficient uncertainty as to the claim scope so as to render the claims
noncompliant with the requirements of§ 112, second paragraph. Ans. 3--4
(citing MPEP § 2173.05(b); Amgen, Inc. v. Chugai Pharmaceutical Co., 927
F.2d 1200 (Fed. Cir. 1991). The important takeaway from Amgen is that that
acceptableness of the term "about" in the context of defining range
limitations is highly dependent upon the situation. Amgen, 927 F.2d at 1218.
In the litigation context a frequently-quoted standard for determining the
necessary exactness regarding ranges is: "If the claims, read in the light of
the specification, reasonably apprise those skilled in the art both of the
utilization and scope of the invention, and if the language is as precise as the
subject matter permits, the courts can demand no more." Georgia-Pacific
Corp. v. United States Plywood Corp., 258 F.2d 124, 136 (2d Cir.), cert.
denied, 358 U.S. 884 (1958), cited with approval in In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014).
Examination is an interactive process. Where the Examiner questions
the clarity of a claim term it becomes incumbent upon the applicant to
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Application 13/980,621
respond with some amendment or explanation as to why the term, as used in
the particular context of the application at issue, is reasonably clear. See,
e.g., In re Packard, 751 F.3d at 1313-14 ("Mr. Packard did not respond
adequately to this group of claim language problems ... he did not focus on
the claim-language difficulties, nor did he propose clarifying changes or
show why, on close scrutiny, the existing claim language really was as
reasonably precise as the circumstances permitted."). Here, Appellants'
arguments do not point to any guidance in the Specification or elsewhere to
inform us as to how one skilled in the art would ascertain the degree of
imprecision allowable at the range endpoints in this particular context.
Rather, Appellants only cite to other instances of cases involving claims that
used the term "about." App. Br. 4--5. These cases cannot be read to have
created a per-se rule that the term "about" never raises issues of
indefiniteness so as to relieve Appellants of their obligation to provide some
explanation as to why the term is appropriate in this particular context or as
precise as this particular subject matter permits.
Although, ultimately, exact range limitations may not necessarily be
required in this context and the use of "about" is not necessarily
inappropriate, we will not scour the record to make arguments or provide
explanation on Appellants' behalf. See Ex Parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) ("Filing a Board appeal does not, unto
itself, entitle an appellant to de nova review of all aspects of a rejection.").
Appellants, having drafted the claims, as opposed to this Board, are in the
best position to clarify the prosecution record so as to resolve any
ambiguities during the examination process and prior to issuance. In re
Packard, 751 F.3d at 1313 (quoting Halliburton Energy Servs., Inc. v. M-I
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Application 13/980,621
LLC, 514 F.3d 1244, 1255 (Fed.Cir.2008)); see also SkyHawke Technologies
v. Deca Int'!, 828 F.3d 1373, 1376 (Fed. Cir. 2016) (Holding that a party
that did not advocate the claim construction ultimately adopted by the Board
is not necessarily bound to that claim construction for purposes of
prosecution history disclaimer); In re Morris, 127 F.3d 1048, 1056 (Fed. Cir.
1997) (In prosecution before the PTO "[i]t is the applicants' burden to
precisely define the invention, not the PTO's."). As Appellants have not
presented arguments to specifically address the issues of claim clarity raised
by the Examiner, we consider any arguments that could have been made
concerning these issues as waived for purposes of this appeal. See 37 C.F.R.
§ 4I.37(c)(l)(iv). Accordingly, we sustain the Examiner's indefiniteness
rejection.
Obviousness
Each of the independent claims before us, claims 1, 12 and 30, recite
the following limitation: "a plurality of features [ on a sheave surface]
configured to interact with the belt for reducing unwanted noise from
interaction between the surface and the at least one belt." Appellants contend
this limitation is not satisfied by Williams as determined by the Examiner
because, "[ t ]he noise in Williams is caused by the rapid rotation of the
pulley and air in the features, not interaction between the surface of the
pulley and the belt." App. Br. 6.
According to the Examiner, "the interaction between the belt and the
pulley in Williams is what causes the noise. Without the features A-C in
Williams, the belt and pulley will interact and trap air pockets between them,
the air pocket will cause a whistle when released." Ans. 4. The Examiner's
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position is not supported by Williams' s disclosure, the evidence of record.
Williams discusses the goal of noise reduction (p. 1, 11. 16-19) and also
discharging the air between the belt and pulley (p. 1, 11. 19-23). However,
the Examiner does not cite any evidence to establish that the removal of the
air pockets between the belt and pulley in Williams contributes to noise
reduction. Williams instead indicates that the air discharge is for "a further
object" of "improv[ing] the contact of a high speed belt and pulley." P. 1, 11.
19-32. Williams's discussion of the pulley edges being not presented to the
air to produce humming or whistling (p. 2, 11. 9-16) and Williams's analogy
to the noise generated by the sharp teeth of a saw in air (p. 2, 11. 20-28) lends
further credibility to Appellants' position that it is the noise generated by the
interaction between the pulley and the air that Williams' grooves serve to
reduce. It is not apparent from the Examiner's explanation how or why
Williams' s grooves would also serve to "reduc [ e] unwanted noise from
interaction between the [sheave] surface and the at least one belt." As the
Examiner has not sufficiently explained how the proposed combination of
Perron and Williams would have yielded this aspect of the claimed subject
matter, the Examiner's obviousness rejection cannot be sustained on the
basis set forth by the Examiner.
DECISION
The Examiner's indefiniteness rejection is affirmed.
The Examiner's obviousness rejection is reversed.
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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)(l )(iv).
AFFIRMED-IN-PART
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