Appeal No. 2003-1178 Page 4
Application No. 09/218,990
227 USPQ 972, 973 (Bd. Pat. App. & Int. 1985). To this end, the requisite motivation
must stem from some teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill in the art and not from
the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-Wiley Corp.,
837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988).
Claim 1 stands rejected under 35 U.S.C. § 103(a) as being obvious in view of the
teachings of Bruyneel. In arriving at this conclusion, the examiner has found that
Bruyneel discloses all of the subject matter disclosed in claim 1 “except for explicitly
having all of the wires less than 0.20 [sic 0.25] mm in diameter.” However, the
examiner takes the position that since Bruyneel teaches that the wires in the cords of a
cable can have diameters in the range of 0.15 mm to 1.20 mm, it would have been
obvious to one of ordinary skill in the art “to have employed any wires [having]
diameters within the disclosed range for constructing the cable.” See Paper No. 21,
pages 3 and 4. The appellants argue in rebuttal that Bruyneel fails to disclose or teach
using a tension member having side-by-side cords for lifting an elevator having the
aspect ratio recited in claim 1, and that there is no suggestion to make the diameter of
all of the wires in the cords less than .25 millimeters (Brief, pages 4 and 5).
To use the language of the appellants’ claim 1, Bruyneel discloses a member
comprising a plurality of discrete cords (12) constructed from a plurality of individual
wires (16). The reference states that these cords may be “used as a hoisting cable or
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