UNITED STATES PATENT AND TRADEMARK OFFICE

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1 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 95/002,228 09/13/ / /31/2016 STROOCK & STROOCK & LAVAN LLP 180 MAIDEN LANE NEW YORK, NY EXAMINER BANANKHAH, MAJID A ART UNIT PAPER NUMBER 3992 MAIL DATE DELIVERY MODE 05/31/2016 PAPER 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. PTOL-90A (Rev. 04/07)

2 UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD W. TODD BAKER Third Party Requester and Respondent v. INVENTIO AG Patent Owner and Appellant Appeal Technology Center 3900 Before JAMES T. MOORE, STEPHEN C. SIU, and BRADLEY W. BAUMEISTER, Administrative Patent Judges. BAUMEISTER, Administrative Patent Judge. DECISION ON APPEAL

3 SUMMARY Background This proceeding arose from a request for inter partes reexamination of US, which is entitled METHOD FOR MODERNIZATION OF AN ELEVATOR INSTALLATION (issued to Paul Friedli on May 17, 2005 from Application 10/316,502, filed December 11, 2002) ( the 465 Patent ). Inter partes Reexamination Request 95/002,228 ( Request ) was filed September 13, 2012 by Requester W. Todd Baker. 1, 2 The 465 Patent issued with claims PO App. Br. 2. Original claims 1 4, 7, 10, and 11 are subject to the instant inter partes reexamination. Id. New claims were added in the amendment filed February, 7, Id. For reasons explained more fully below, the Examiner conducting the reexamination proceeding ultimately rejected original claims 1 4, 7, 10, and 11, as well as newly-added claims PO App. Br. 2. Owner timely appealed. See generally PO App. Br. 1 Otis Elevator Company is asserted to be Requester s real party in interest. Request 1. 2 In addition to the above-noted Request, we also refer to various other documents throughout this Opinion, including the following: (1) Non Final Rejection, mailed Dec. 7, 2012 ( Non-Final Rej. ); (2) the Action Closing Prosecution, mailed December 4, 2013 ( ACP ); (3) Patent Owner s Response to Office Action of December 7, 2012 Under 37 C.F.R , filed February 20, 2014) ( PO Response to ACP ); (4) the Right of Appeal Notice, mailed April 30, 2014 ( RAN ); (5) Patent Owner s Appeal Brief Under 35 U.S.C. 134, filed August 21, 2014 ( PO App. Br. ); (6) Requester s Respondent Brief, filed September 19, 2014 ( Resp. Br. ); and (7) the Examiner s Answer, mailed February 23, 2015 (incorporating the RAN by reference) ( Ans. ). 2

4 According to Owner, the present appeal is related to inter partes Reexamination Control No. 95/002,222, which was requested for US 6,892,861 B2 (the 861 Patent ), PTAB Appeal ( the 4459 Appeal ). PO App. Br. 1. As will be explained in more detail below, the claims of these related appeals are directed to similar subject matter, differing most notably in that the claims at issue in the 4459 Appeal are directed to [a] device for temporarily operating an elevator installation during modernization ( 4459 Appeal, claim 1) (emphasis added) and [a] system for operating an elevator installation during a modernization process ( 4459 Appeal, claim 18) (emphasis added), whereas the present claims are directed to [a] method of modernizing an elevator installation (claim 1) (emphasis added). The 861 Patent and the 465 Patent were also involved in the patent infringement litigation Inventio AG v. Thyssenkrupp Elevator Americas Corp., 1:08-cv in the United States District Court of Delaware ( the 874 litigation ). PO App. Br. 1. In the 874 litigation, the jury found, inter alia, claims 1 and 3 of the 861 Patent, as well as claims 1 3 of the 465 Patent, to be invalid for being obvious under 35 U.S.C Inventio AG v. Thyssenkrupp Elevator Americas Corp., 2014 WL (D.Del. 2015). Owner subsequently sought, inter alia, judgment as a matter of law on the finding of obviousness (Inventio AG v. Thyssenkrupp Elevator Americas Corp., RGA, Document 602 ( Inventio AG Memorandum Opinion ) at 2), but the District Court denied that request (id. at 18) aff d 649 F.3d 1350 (Fed. Cir. 2011). 3

5 In the present appeal, we have jurisdiction under 35 U.S.C. 134 and 315. We review the appealed rejections for error based upon the issues identified by Appellants, and in light of the arguments and evidence produced thereon. See Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential) (citing In re Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992)). We AFFIRM. Pursuant to 37 C.F.R (a), we designate our affirmance of the obviousness rejections as NEW GROUNDS OF REJECTION PURSUANT TO 41.77(a). follows: The Invention and Claims The District Court explained the invention in the Summary of Facts as Inventio AG, a provider of elevators, escalators and related services, reportedly owned [the 861 and 465 Patents,] which involved modernizing or upgrading an existing conventional elevator system and its components to a destination call control elevator system. In a conventional elevator system, a passenger calls the elevator using the up/down buttons at the floor terminal and then selects the destination floor once inside. Patents 861 and 465 disclose a modernized elevator system [that] allows a passenger, at the boarding floor, to select the desired destination floor from a keypad-button and the computerized elevator control selects the fastest elevator to transport the passenger to the destination floor. The modernization process involves replacing the original floor call transmitters (up/down buttons) with new floor terminals (buttons pushed to call an elevator); a computing unit [that] processes the passenger s input; and a modernizing device [that] acts as an intermediary between the computing unit and the elevator control. By updating the technology pursuant to the patents directions, conventional elevators can be converted to a destination call control elevator system without completely 4

6 shutting down the elevator bank, thus saving time and money. Inventio AG, 2014 WL Independent claim 1 is illustrative of the appealed original claims: 1. A method of modernizing an elevator installation having at least one elevator controlled by at least one elevator control by way of at least one call report, comprising: a. installing at least one floor terminal at each floor served by an elevator controlled by an elevator control for at least one of the input of destination call reports and for recognition of identification codes of users; b. installing at least one computing unit and connecting and association of destination floors with recognized once of the identification codes and for the output of at least one destination signal; and c. installing at least one modernizing device and connecting the at least one modernizing device to said floor terminals and said at least one computing unit for reading the destination signal, for converting the destination signal into at least one call report and for controlling the elevator control by way of the call report. Independent claim 16 is illustrative of the appealed new claims: 16. A method of modernizing an elevator installation having a plurality of elevators, at least one of the plurality of elevators controlled by at least one existing elevator control by way of at least one call report, the modernization converting an up-down elevator control system to a destination call control system by modifying at least one elevator component in the elevator installation using at least one modernizing device that is not required to operate once the modernization has been completed, the method comprising: a. installing at least one floor terminal at each floor served by at least one of the plurality of elevators controlled by the at least one existing elevator control, the 5

7 at least one floor terminal operative to receive an input of destination call reports or for recognition of identification codes used to identify users; b. installing at least one computing unit and responsively connecting the at least one computing unit to said floor terminals for evaluating the destination call reports and association of destination floors with recognized ones of the identification codes, and for the output of at least one destination signal during the modernization converting the up-down elevator control system to the destination call control system; and c. installing the at least one modernizing device and responsivelv connecting the at least one modernizing device to said floor terminals and said at least one computing unit for reading the destination signal, for converting the destination signal into at least one call report and for controlling the elevator control by way of the call report during the modernization converting the updown elevator control system to the destination call control system. The Rejections Owner lists the following rejections on appeal (PO App. Br. 1 2): 3 1. Claims 1 3, 10, 11, 22 24, and 27 stand rejected under 35 U.S.C. 103(a) over Schröder, Advanced Dispatching, ELEVATOR WORLD, In response to the Examiner issuing the Non-Final Rejection of original claims 1 4, 7, 10, and 11, Owner amended the claims, adding new claims See Patent Owner s Response to Office Action of December 7, 2012 Under 37 C.F.R (filed February 7, 2013) at 3 7. The Examiner subsequently rejected all of these newly added claims under 35 U.S.C. 314(a) for improperly enlarging the scope of the original claims of the patent being Reexamined and under 35 U.S.C. 112, 1, for lacking adequate written description support for the full scope of the new claims. The Examiner also rejected claims 16, 22, and 28 under 35 U.S.C. 112, 2, as indefinite. ACP 4 12 (setting forth approximately five general 6

8 ( Schröder ) in view of Ovaska (US 5,352,857, issued Oct. 4, 1994 ( Ovaska 857 ). 2. Claims 4, 7, 25, and 26 stand rejected under 35 U.S.C. 103(a) over Schröder in view of Ovaska 857 and Ovaska et al. (US 4,844,204; issued July 4, 1989) ( Ovaska 204 ). 3. Claim 7 stands rejected under 35 U.S.C. 103(a) over Schröder in view of Ovaska 857 and Ichioka (US 4,724,931; issued Feb. 16, 1988) ( Ichioka ). 4. Claims 16 18, 21, 28 30, and 33 stand rejected under 35 U.S.C. 103(a) over Schröder in view of Ovaska 857 and Friedli (US 5,689,094; issued Nov. 18, 1997) ( Friedli 094 ). 5. Claims 19, 20, 31, and 32 stand rejected under 35 U.S.C. 103(a) over Schröder in view of Ovaska 857, Friedli 094, and Ovaska Claims stand rejected under 35 U.S.C. 314(a). 7. Claims stand rejected under 35 U.S.C. 112, Claims 16, 22, and 28 stand rejected under 35 U.S.C. 112, 2. rationales for why various ones of the new claims are broader than the original claims, are not supported by the 465 Patent s original Specification, or are not reasonably clear). Owner subsequently attempted to amend new claims (see PO Response to ACP 3 7), but the Examiner denied entry of this claim amendment (RAN 1 10). Accordingly, we consider on Appeal only the original version of new claims 16 33, which appears in Part 1 Listing of Claims under the Appeal of Owner s Appeal Brief Claim Appendix not the non-entered proposed amendments, which appear in Part 2 of the Appeal Brief Claim Appendix. 7

9 THE REJECTIONS UNDER 35 U.S.C. 314 For several reasons, the Examiner rejects various combinations of new claims under 35 U.S.C. 314(a) for improper broadening. We address each rationale individually. follows: Principles of Law The Federal Circuit s oft-quoted standard for broadening is as A claim of a reissue application is broader in scope than the original claims if it contains within its scope any conceivable apparatus or process [that] would not have infringed the original patent. A reissue claim that is broader in any respect is considered to be broader than the original claims even though it may be narrower in other respects. Tilloston, Ltd. V. Walbro Corp., 831 F.2d 1033, 1037 n.2 (Fed. Cir. 1987). The same broadening test is applied to claims in reexamination. Anderson v. International Eng g & Mfg., 160 F.3d 135, 1349 (Fed Cir. 1998). I. ELEVATOR CONTROL CONTROLLING MORE THAN ONE ELEVATOR The RAN incorporates by reference the Examiner s reasoning as set in the Action Closing Prosecution. RAN 11 (citing ACP 4 10). The Action Closing Prosecution, in turn, sets forth the first basis for concluding claims improperly broaden the original claims is as follows: New independent claims 16, 22, and 28, as compared to 465 patent claim 1, read in part: installing at least one floor terminal at each floor served by at least one of the plurality of [an] elevators controlled by the at least one existing [an] elevator control. The new limitation is broader than claim 1 because it covers a plurality of elevators controlled by a single elevator control, as opposed to an elevator controlled by an elevator 8

10 ACP 5. control. The district court construed elevator installation, consistent with the specification, to mean a group of elevators that convey passengers in a building, where each elevator is controlled by an elevator control and rejected Patent Owner s proposed interpretation that there could be one elevator control for the group of elevators. (Emphasis added.) (Request Ex. 3, pages ) The district court construed elevator control to mean an existing device that controls the operation of the elevator the identical elevator control that was in place before modernization, and rejected Patent Owner s proposed claim construction of a device for controlling the operation of the least one elevator. (Request, Ex. 3, pages ) Requester presents essentially the same argument in support of the Examiner s rejection. 3PR Resp. Br. 23. The Examiner s stated reasons and Requester s arguments, however, do not persuade us that the new claims are broader in any manner than original, independent claim 1. The flaw in the Examiner s reasoning is that the Examiner is interpreting claim 1 unduly narrowly. As noted by the Examiner, original claim 1 does encompass a single elevator controlled by a single controller. However, claim 1 s breadth is not limited to such embodiments. Claim 1 does not recite an elevator individually controlled by an elevator control. Nor does it recite an elevator controlled by an elevator control that controls only that individual elevator. Rather, claim 1 is written broadly enough so as to also encompass methods of installing a floor terminal at each floor where an elevator is controlled either by an individual elevator control or by a group elevator control. As such, the newly added claims are narrower than claim 1 because 9

11 the new claims only encompass the second noted embodiment the embodiment in which an elevator is controlled by a group elevator control. The Examiner, Owner, and Requester reference the District court s claim constructions in relation to the improper-broadening rejection. RAN 7; PO App. Br. 25; ACP 5 (citing Request Ex. 3 (Inventio AG v. Thyssenkrupp Elevator Americas Corp., RGA, Document 135 ( Inventio AG Markman Memorandum ) at 36 38, 39 42)); 3PR Resp. Br. (citing Inventio AG Markman Memorandum at 36 38). The Board is aware of, and has fully considered, the District Court s claim constructions. However, precedent makes clear that the USPTO is not bound in reexamination proceedings by claim constructions produced by a court. In re Trans Texas Holdings Corp., 498 F.3d 1290, 1301 (2007). In reexamination proceedings, the Board is to give unexpired claims their broadest reasonable interpretation, consistent with the specification. In re Yamamoto, 740 F.2d 1569, 1571 (Fed Cir. 1984). This standard differs from that followed by a district court. In a district court context, [the Federal Circuit has] said that claims should be construed, if possible, to sustain their validity. Id. fn*. II. ELIMINATING A FUNCTION IS A BROADENING Contentions The Examiner finds that new claim 16 is broader than original claim 1 because [claim 16] only requires receiving input of destination call reports or recognition of identification codes, whereas claim 1, as initially interpreted by the district court, requires both (emphasis added). RAN 6. 10

12 For similar reasons, the Examiner finds that independent claims 22 and 28 improperly broaden the scope of the original claim 1: [N]ew independent claim 22, as compared to claim 1, recites: the [for] at least one floor terminal operative to receive an [of the] input of destination call reports [and for recognition of identification codes of users] and connecting the at least one computing unit to said floor terminals for [at least one of] evaluating the destination call reports [and association of destination floors with recognized ones of the identification codes,] and for the output of at least one destination signal. Thus, new claim 22 is broader than original claim 1 because it only requires receiving destination call reports and evaluating destination call reports, whereas claim 1, as initially interpreted by the district court, requires both receiving destination call reports and recognition of identification codes, and both evaluating destination call reports and associating destination floors with identification codes. Additionally, new independent claim 28, as compared to claim 1, recites: the [for] at least one floor terminal operative to recognize [of the input of destination call reports and for recognition of] identification codes used to identify [of] users and connecting the at least one computing unit to said floor terminals for [at least one of evaluating the destination call reports and] association of destination floors with recognized ones of the identification codes and for the output of at least one destination signal. In other words, new claim 28 is broader than original claim 1 because it only requires recognition of identification codes and association of destination floors with a recognized identification code, whereas claim 1, as initially interpreted by the district court, requires both receiving destination call reports and recognition of identification codes, and both evaluating destination call reports and associating destination floors with identification codes. RAN 6 7 (emphasis added). 11

13 Based upon these rationales, the Examiner rejects new claims under 35 U.S.C. 314(a). Id. at 7. From this statement, we infer the Examiner s position to be that all of the newly added dependent claims likewise present the same issue. Analysis The Examiner appears to be confusing the breadth of the claimed functionality of a component used in a recited method, as exists in the present situation, with the breadth of affirmatively recited method steps. That is, this is not a situation in which the claims originally set forth two affirmative method steps of receiving an input of destination call reports and recognizing identification codes used to identify users, and in which new claims were then added to omit one of these recited steps. Such a hypothetical claim amendment would broaden the claims. However, in the present case, original method claim 1 sets forth a step of installing a floor terminal that has the functionality or capability of at least one of inputting destination call reports and the separate functionality of recognizing identification codes. See claim 1, limitation a. That is, claim 1 is generic to or reads on any one of the following three steps: (1) installing a floor terminal that is capable of inputting destination call reports; (2) installing a floor terminal that is capable of recognizing identification codes; and (3) installing a floor terminal that is capable of both inputting destination call reports and recognizing identification codes. Claim 16 does not broaden the affirmative method step of claim is installing a floor terminal. Claim 16 instead narrows the specifically recited functionality of the floor terminal being installed. That is, claim 16 only 12

14 reads on installing a floor terminal that is capable of inputting destination call reports. Stated another way, the language does not change from an original claim providing all three functionalities A, B, and C to proving only one functionality A. The present situation instead can be analogized to an original Markush claim containing three elements A, B, and C, and a later added claim containing only a single element A. As such, the Examiner has not demonstrated the elimination of functionality broadens new claim 16 beyond that of original claim 1. The same deficiency applies to the Examiner s reasoning in relation to the elimination of functionality in claim 22 and 28, as well. III. STOPPING THE COMMUNICATION OF A CONNECTION INSTEAD OF INTERRUPTING IS BROADENING The Examiner determines that dependent claims 17, 18, 23, 24, 29, and 30 impermissibly broaden the original claims because these new claims are broader than original dependent claims 2 and 3. RAN 7; accord id. at 7, 8. The Examiner reaches this conclusion based upon the fact that the new claims recite stopping the communication of at least one existing electrical floor call or car call transmitter connection, whereas the original claims set forth interrupting these connections. Cf., e.g., original claims 2 and 3 with new claims 17 and 18. For the purposes of the impermissible-broadening analysis, we need not decide whether the act of stopping is broader than interrupting. Even if we were to assume for the sake of argument this to be true, the Examiner still would not have established a prima facie showing of improper 13

15 broadening. This is because the Examiner is improperly comparing the challenged new claims to original dependent claims 2 and 3, which depend from independent claim 1 not comparing the new claims to the broader original claim 1, itself. That is, the Examiner, at most, may have demonstrated that the new claims have an intermediate claim scope relative to original independent claim 1 and dependent claims 2 and 3. As such, the Examiner has not established that the new claims are broader than every claim of the original patent. See Tilloston, 831 F.2d at 1037 n.2 (explaining that the relevant test is whether a new claim is broader in scope than the original claims (in the plural), thereby indicating that impermissible broadening occurs when the new claim is broader than all of the original claims). IV. RESPONSIVELY CONNECTING IS NOT BROADENING The Examiner finds that claims impermissibly broaden claim 1 because according to the Examiner, [n]ew independent claims 16, 22 and 28 change connecting to responsively connecting in steps (b) and (c). Responsively connecting represents a broadening over original claim 1 because it covers a connection that is only connected when it needs to respond, such as a wireless connection. RAN 9. We disagree. Presuming that some objective distinction exists between the respective claim terms a connection and a responsive connection, the former, original term is broader than the latter, new term. The doctrine of claim differentiation create[s] a presumption that each claim in a patent has a different scope. The difference in meaning and scope between claims is presumed to be significant [t]o the extent that the absence 14

16 of such difference in meaning and scope would make a claim superfluous. Free Motion Fitness, Inc. v. Cybex Int l, Inc., 423 F.3d 1343, 1351 (Fed. Cir. 2005)(internal quotation marks omitted). In the present situation, the new claims inclusion of the adjective responsive modifying connection indicates that the unmodified recitation of connection in claim 1 is broader. That is, claim 1 appears to encompass unresponsive connections as well as responsive connections. V. CONCLUSION For the preceding reasons, the Examiner has not established that any of the new claims are broader in scope of than all of the original claims. Accordingly, we do not sustain the rejection of claims under 35 U.S.C. 314(a) for improperly broadening the scope of the original claims. THE 35 U.S.C. 112, 1, WRITTEN DESCRIPTION REJECTIONS Contentions The Examiner finds (RAN (citing ACP 11)) that newly added claims lack adequate written description support for the full scope of the following newly added language (set forth with emphasis) that appears in the preamble of each if independent claims 16, 22, and 28: A method of modernizing an elevator installation having a plurality of elevators,... the modernizing... using at least one modernized device that is not required to operate once the modernization has been completed. The Examiner takes the position that the 465 patent describes that the modernizing device is temporary and is removed once modernization is 15

17 complete. ACP 11. The Examiner finds that the claim language in question causes the newly added claims to now read on a wireless modernization device that may be left in place after the modernization. See id. The Examiner reasons that [n]owhere [does] the specification of the 465 patent describe that the modernization device may be left in place when modernization is complete.... Additionally, there is no wireless connection disclosed in the specification of the 465 patent. Id. Owner argues that the original claims provide adequate written description support for the new claims because the original claims lack of any limiting language causes the original claims to be broad enough to encompass the situation in which the modernizing device is not removed: [T]he ACP acknowledges that original claim 1 does not recite that the modernization device is removed once the modernization is complete. In addition, the ACP notes that claim 11 specifically recites that the modernizing device is removed once the modernization is complete. Accordingly, based on claim differentiation with respect to the original claims[,] which themselves provide a written description, there is no requirement that the modernization device operate once the modernization has been completed because claim 1 is broad enough to be construed in such a manner and does not require the modernization device to be removed. PO App. Br. 29. Analysis Owner s argument is unpersuasive. The test for determining compliance with the written description requirement is whether the disclosure of the application as originally filed reasonably conveys to the artisan that the inventor had possession at that time of the later claimed subject matter. In re Kaslow, 707 F.2d 1366, 1375 (Fed. Cir. 1983). 16

18 The Specification s lack of disclosure cannot be excused merely because the original claims are broad enough to encompass the newly claimed subject matter. [O]ne cannot disclose a forest in the original application, and then later pick a tree out of the forest and say here is my invention. Purdue Pharma L.P. v. Faulding Inc., 230 F.3d 1320, 1326 (Fed. Cir. 2000). Rather, the Specification must provide some guides or blaze marks that disclose the claimed invention.... specifically, as something [A]ppellants actually invented. Ariad Pharm., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1348 (Fed. Cir. 2010) (en banc). Because we find the language of independent claims 16, 22, and 28 to lack adequate written description support in the original Specification, we need not address the Examiner s further finding (see ACP 11) that dependent claims 17, 18, 23, 24, 29, and 30 present additional language that also lacks adequate written description support. See In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009) (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp. v. Valmet Oy, 742 F.2d 1421 (Fed. Cir. 1984) (ITC can decide a single dispositive issue of numerous resolved by the presiding officer; there is no need for the Commission to decide all issues decided by the presiding officer). THE 35 U.S.C. 112, 2, INDEFINITENESS REJECTIONS For convenience, the full preamble of new claim 16 is reproduced below (with emphasis added): 16. A method of modernizing an elevator installation having a plurality of elevators, at least one of the plurality of elevators controlled by at least one existing elevator control by way of at 17

19 least one call report, the modernization converting an up-down elevator control system to a destination call control system by modifying at least one elevator component in the elevator installation using at least one modernizing device that is not required to operate once the modernization has been completed, the method comprising: Contentions The Examiner finds claims 16, 22, and 28 to be indefinite for the following reason: Examiner agrees with the Requester because, those claims add the limitation modifying at least one elevator component in the elevator installation using at least one modernizing device that is not required to operate once the modernization has been completed in the preamble. It is not clear what elevator component is being modified using the modernizing device. ACP. 12, (citing RAN 11). Analysis While claim 16 s preamble may not be the model of clarity, we agree with Owner that claim 16 is not unreasonably ambiguous when read in the following manner: the language modifying modifies the at least one elevator component, and the language using the modernizing device modifies the term modernization and not the verb modifying. There is no basis to construe this claim language in a manner to create confusion, as opposed to the reasonable broadest interpretation. PO App. Br. 30. as follows: That is, we deem it reasonably clear that claim 16 is to be interpreted 16. A method of modernizing an elevator installation having a plurality of elevators, at least one of the plurality of elevators controlled by at least one existing elevator control by way of at least one call report, the modernization converting an up-down 18

20 elevator control system to a destination call control system by modifying at least one elevator component in the elevator installation[, the modernization] using at least one modernizing device that is not required to operate once the modernization has been completed, the method comprising.... Accordingly, we do not sustain the Examiner s indefiniteness rejection under 35 U.S.C. 112, 2. THE OBVIOUSNESS REJECTIONS UNDER 35 U.S.C. 103 CLAIM 1 3 Contentions As noted above, claims 1 3, among others, stand rejected as obvious over Schröder in view of Ovaska 857. PO App. Br. 4. Owner argues that this rejection is improper for various reasons. Owner first argues that the Fortune Declaration is improper [and] should []be given [little or no] evidentiary weight. Id. at 5. Owner also argues that claims 1 is not obvious over Schröder in view of Ovaska 857 because: (a) The term overlay does not have a well-known meaning as asserted in the Fortune Declaration (id. at 10); (b) Ovaska 857 s limited teaching of simple passive adaptors is not sufficient to make up the deficiencies of Schroder (id.at 12), and as such, [t]here is no motivation... to combine the teachings of Schroder and Ovaska (id.). Owner also argues that The RAN fails to show that one of ordinary skill in the art would have known to use destination signals [in the first instance] or how to modify the adapter of Ovaska 857. Id. at 16. Owner presents additional arguments in relation to dependent claims 2 and 3. Id. at

21 Analysis Initially, we observe that our reviewing court has sustained the District Court s independent determination that claims 1 3 are invalid for obviousness. Inventio AG Memorandum Opinion, aff d 649 F.3d 1350 (Fed. Cir. 2011). Our reviewing court s decision is binding upon this Panel in the present appeal. See Soverain Software LLC v. Victoria s Secret Direct Brand Management, LLC, Case No ; (Fed. Cir. 2015) (finding of obviousness binding on subsequent parties); see also U.S. Ethernet Innovations LLC v. Texas Instruments Inc., No , Fed. Cir.; 2016 U.S. App. LEXIS (Federal Circuit U.S. Court of Appeals turned away an appeal of a Texas federal judge s holding of patent invalidity on the basis of issue preclusion.). The District Court s conclusion of obviousness appears to be based on a body of evidence that goes beyond the combination of Schröder and Ovaska 857, which the Examiner relied upon in the present reexamination proceeding. The District Court s conclusion instead appears to be based upon these two references in further combination with the following documents: (i) Fortune, Overlays, ELEVATOR WORLD (1985), 41 44; (ii) (iii) (iv) (v) Lustig, Modernization, ELEVATOR TECHNOLOGY 3, PROCEEDINGS OF ELEVCON 90; Schindler Miconic 10 Sales brochure; Friedli 094; and Wolfe, An Elevator Consultant s Role in Elevator Modernization, ELEVATOR WORLD, (1989). 20

22 (vi) Arora, Are Dispatching Overlays a Panacea in Improving Lift Performance of the 1960s and 1970s? (1996); and (vii) Schröder (US 4,718,520; issued Jan. 12, 1988). See Inventio AG s Opening Brief in Support of Its Post-Trial Motion for Judgment as a Matter of Law and/or For a New Trial, (filed Mar. 28, 2014) at Because the District Court s conclusion was based upon different evidence than that considered by the Examiner, we designate our affirmance of the obviousness rejection of claims 1 3 as constituting new grounds pursuant to 37 C.F.R (b). Regardless, though, because this issue has already been resolved, we need not address Owner s present arguments regarding the combination of only Schröder and Ovaska 857, as they relate to claims 1 3. See Gleave, 560 F.3d at 1338 (not reaching other rejections after upholding an anticipation rejection); see also Beloit Corp., 742 F.2d at 1421 (ITC can decide a single dispositive issue of numerous resolved by the presiding officer; there is no need for the Commission to decide all issues decided by the presiding officer). CLAIMS 4 AND 7 Dependent claims 4 and 7 read as follows: 4. The method according to claim 1 including connecting with said modernizing device at least one existing electrical drive line between at least one drive and the elevator control. 7. The method according to claim 1 including connecting with said modernizing device at least one output for at least one electrical car indicator line of the elevator control. 21

23 In rejecting these claims as obvious, the Examiner additionally relies upon Ovaska 204 for teaching these input signals to, as well as output signals from, the modernizing device. RAN 26; see also Request Owner argues the nonobviousness of dependent claims 4 and 7 for the same reasons pertaining to claim 1. PO App. Br. 18. This argument is unpersuasive or any error in the obviousness rejection of claims 4 and 7 for the reasons set forth above in relation to claim 1. Owner additionally argues that it is inappropriate to assume that the connection between the matching computer of Ovaska 204 with a drive line or car indicator line can be applicable to the adapter of Ovaska 857. Id. This argument is unpersuasive because Owner presents insufficient evidence or explanation for why such an assumption would be inappropriate. Id. As such, Owner s conclusory and unsupported attorney argument does not rebut the Examiner s conclusions adequately. In further regard to claim 7, the Examiner additionally rejects claim 7 as obvious over Schröder, Ovaska 857, and Ichioka. E.g. RAN 12. Owner argues that Ichioka s interface does not constitute a modernizing device. PO App. Br. 20. Owner further argues that this fact is important because the three-way combination of [the cited art] fails to show or suggest [] the combination of features[], including the feature of the input connected with at least one car indicator line... receiving an indication signal. PO App. Br. 21. These arguments are unpersuasive of error. As explained above, the District Court has already found that the prior art relied upon in rendering claim 1 obvious, does teach a modernizing device. Furthermore, Owner s 22

24 argument that the combination does not teach at least one car indicator line... receiving an indication signal, constitutes mere conclusory attorney argument unsupported by facts or evidence. PO App. Br. 21. CLAIM 10 Dependent claim 10 recites performing the steps [of claim 1] for each elevator car and associated elevator control of an elevator installation in succession whereby the elevator installation is modernized in a modular manner. Owner argues the nonobviousness of independent claim 10 for the same reasons pertaining to claim 1. PO App. Br. 18. Owner additionally argues that the Examiner erred in finding, absent any supporting evidence, that it would be common sense to modernize one elevator control at a time so that the rest of the elevators remain operational. PO App. Br. 19 (citing RAN 27). Owner argues that In re Zurko, 258 F.3d 1379, 1385 (Fed. Cir. 2011) stands for the proposition that common sense, without more, cannot be relied [upon] in rejecting a claim. PO App. Br. 19. Owner additionally argues that the Examiner has failed to demonstrate that modernizing the elevators one at a time would have been common sense, specifically at the time of the invention. Id. Owner s arguments regarding claim 10 s dependency from claim 1 are unpersuasive of error for the reasons set forth above. Owner s arguments regarding Zurko are also unpersuasive. First, Zurko s holding regarding the use of common sense was overturned by the Supreme Court. See KSR Int l Co. v. Teleflex, Inc., 550 U.S. 398, 403 (2007) (cautioning that 23

25 [r]igid preventative rules that deny recourse to common sense are neither necessary under, nor consistent with, this Court s case law ). More importantly, though, Owner is incorrect in arguing that the Examiner s reliance on common sense was otherwise unsupported. To the contrary, the Examiner specifically points to Ovaska 857 for teaching that the elevator installations can be modernized one at a time. See RAN 27. Owner does not address the Examiner s findings in this regard. CLAIM 11 Dependent claim 11 recites that the modernizing method of claim 1 further includes modernizing the elevator car, modernizing a drive associated with the elevator car, modernizing a conveying cable associated with the elevator car, modernizing the elevator control, and removing said at least one modernizing device from the elevator installation. Owner argues the nonobviousness of independent claim 11 for the same reasons pertaining to claim 1. PO App. Br. 18. Owner additionally argues that Ovaska 857 does not discuss modernizing a conveying cable, the elevator car, a drive, or the elevator control. PO App. Br. 20. Owner s arguments regarding claim 11 s dependency from claim 1 are unpersuasive of error for the reasons set forth above. Owner s arguments regarding Ovaska s alleged shortcomings are also unpersuasive. The Examiner explains the modules modernized in Ovaska 857 specifically include door control and car panel (functions associated with the elevator car), as well as motor drive, elevator logic, floor signalization, and related functions.... Moreover, [t]he elevator-specific modules are not limited to those mentioned, and Ovaska

26 RAN 28. teaches that in a complete modernization, the rest of the components of the elevator installation may be modernized... which includes those familiar to one of ordinary skill in the art, such as a conveying cable. Owner does not argue persuasively why any of the claimed modernizing steps would not have been implied by this disclosure, or at least rendered obvious to undertake in light of Ovaska 857 s disclosure that all of the components may be modernized. CLAIMS Owner argues the nonobviousness of new claims for the same reasons pertaining to claim 1. PO App. Br This argument is unpersuasive for the reasons set forth above in relation to claim 1. In separate sections of Owner s Appeal Brief, Owner then argues that claims and 27 are not obvious for the reasons set forth in relation to claims 1 3. PO App. Br. 22. Owner argues that claims 25 and 26 are not obvious for the reasons set forth in relation to claims 4 and 7. Id. Owner argues that claims 16 18, 21, 28 30, and 33 are not obvious for the reasons set forth in relation to claims 1 and 16. Id. at 23. Owner argues that claim 28 is not obvious for the reasons set forth in relation to claims 1 and 16. Id. Owner argues that claims 17, 18, and 21 depend from claim 16 and are not obvious for the reasons set forth in relation to that claim. Id. Owner argues that claims 29, 30, and 33 depend from claim 28 and are not obvious for the reasons set forth in relation to that latter claim. Id. Owner argues that claims 17, 18, 29, and 30 are not obvious for the reasons set forth in relation to claims 2 and 3. Id. Owner argues that claims 19 and 20 are not obvious 25

27 for the reasons set forth in relation to claims 16, 4, and 7. Id. at 24. Owner argues that claims 31 and 32 are not obvious for the reasons set forth in relation to claims 4, and 7. Id. These arguments are not persuasive for the reasons set forth above in relation to claims 1 4, 7, 10, and 11. CONCLUSIONS The Examiner s decision rejecting claims under 35 U.S.C. 314(a) for improper broadening is not sustained. The Examiner s decision rejecting claims under 35 U.S.C. 112, 1, for lacking adequate written description is sustained. The Examiner s decision rejecting claims 16, 22, and 28 under 35 U.S.C. 112, 2, for indefiniteness is not sustained. The Examiner s decision rejecting claims 1 4, 7, 10, 11, and under 35 U.S.C. 103 as obvious is sustained. DECISION The Examiner s decision rejecting claims 1 4, 7, 10, 11, and is affirmed. We designate our affirmance of the obviousness rejections of claims 1 4, 7, 10, 11, and under 35 U.S.C. 103 as constituting new grounds of rejection pursuant to our authority under 37 C.F.R (a). Section 41.77(b) provides that [a] new ground of rejection... shall not be considered final for judicial review. That section also provides that Patent Owner, WITHIN ONE MONTH FROM THE DATE OF THE 26

28 DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal proceeding as to the rejected claims: (1) Reopen prosecution. The owner may file a response requesting reopening of prosecution before the examiner. Such a response must be either an amendment of the claims so rejected or new evidence relating to the claims so rejected, or both.... (2) Request rehearing. The owner may request that the proceeding be reheard under by the Board upon the same record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought.... In accordance with 37 C.F.R (a)(1), the [p]arties to the appeal may file a request for rehearing of the decision within one month of the date of:... [t]he original decision of the Board under 41.77(a). A request for rehearing must be in compliance with 37 C.F.R (b). Comments in opposition to the request and additional requests for rehearing must be in accordance with 37 C.F.R (c)-(d), respectively. Under 37 C.F.R (e), the times for requesting rehearing under paragraph (a) of this section, for requesting further rehearing under paragraph (c) of this section, and for submitting comments under paragraph (b) of this section may not be extended. An appeal to the United States Court of Appeals for the Federal Circuit under 35 U.S.C and 315 and 37 C.F.R for an inter partes reexamination proceeding commenced on or after November 2, 2002 may not be taken until all parties rights to request rehearing have been exhausted, at which time the decision of the Board is final and 27

29 appealable by any party to the appeal to the Board. 37 C.F.R See also MPEP 2682 (8th ed., Rev. 8, July 2010). No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R (a). Requests for extensions of time in this inter partes reexamination proceeding are governed by 37 C.F.R See 37 C.F.R AFFIRMED 37 C.F.R (a) rvb Patent Owner: Stroock & Stroock & Lavan, LLP 180 Maiden Lane New York, NY Third Party Requester: Oblon Spivak McClelland Maier & Neustadt, LLP 1940 Duke Street Alexandria, VA