Ex Parte Bamber

Board of Patent Appeals and Interferences

Oct 13, 2005

10407498 (B.P.A.I. Oct. 13, 2005)

1 As the appellant is aware (see page 11 of the brief), the dependent
claim 10 phrase "The safety device of Claim 8" should read –- The method of
Claim 8 -–.
The opinion in support of the decision being entered today was not
written for publication and is not binding precedent of the Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte JEFFREY V. BAMBER
____________
Appeal No. 2005-2435
Application No. 10/407,498
____________
ON BRIEF
____________
Before GARRIS, WALTZ, and JEFFREY T. SMITH, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1-201.
The subject matter on appeal relates to a safety device for
a ladder. With reference to the appellant's drawing, the safety
device 34 comprises an arm 38 having two end portions including a
first end portion for attachment to the upper portion of a ladder
and a second end portion to which is joined a holding member 40
that is attachable to a portion of a structure to hold a ladder
in place.
Appeal No. 2005-2435
Application No. 10/407,498
2 In his answer, the examiner cites a publication to Charlton on
page 2 and discusses this publication on page 6. However, this publication
has no relevance whatsoever to any of the issues raised by the rejections
before us on this appeal. The examiner's answer is not an appropriate forum
in which to present and discuss a reference which is irrelevant to the
involved appeal, and therefore we admonish the examiner and his appeal
conferees to no longer engage in such a practice.
2
The appealed subject matter also relates to a ladder in combination
with the aforementioned safety device and to a method for securing
a ladder to a structure via the aforementioned safety device. This
appealed subject matter is adequately represented by independent
claim 1 and claim 13 which depends from claim 1.
These claims read as follows:
1. A safety device for a ladder which ladder has an upper
portion, said safety device comprising:
an arm for attaching to an upper portion of a ladder, said
arm having two end portions comprising a first end portion for
attachment to the upper portion of a ladder and a second end
portion, wherein at least a portion of the arm is flexible; and
a holding mechanism joined to the second end portion of the
arm, wherein said holding mechanism is attachable to a portion
of a structure to hold a ladder in place.
13. The safety device of Claim l wherein the ladder has a
pair of side rails and a plurality of rungs extending between said
side rails, said safety device is configured so that said holding
mechanism is spaced away from the rungs of the ladder when said
safety device is holding the ladder to a structure.
The references set forth below are relied upon by the Examiner
in the § 102 and § 103 rejections before us2:
Appeal No. 2005-2435
Application No. 10/407,498
3
Allred 5,529,145 June 25, 1996
Micro Mark Catalogue, "Ratchet Action Clamps", (date unknown: cited
by applicant), page 65
Claim 13 is rejected under the second paragraph of 35 U.S.C.
§ 112 for failing to particularly point out and distinctly claim
the subject matter which the appellant regards as his intention.
Claims 1-3, 5, 7-10 and 13-20 are rejected under 35 U.S.C.
§ 102(b) as being anticipated by Allred.
Claims 4, 11 and 12 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Allred, and claim 6 is
correspondingly rejected over this reference and further in view
of Micro Mark Catalogue.
We refer to the brief and reply brief and to the answer for
a complete discussion of the contrary viewpoints expressed by
the appellant and by the examiner concerning these rejections.
OPINION
For the reasons which follow, we cannot sustain any of the
rejections advanced by the examiner in this appeal.
The examiner considers dependent claim 13 to violate the
second paragraph of § 112 because, in his view, it is unclear
whether this claim is intended to be drawn to a "safety device"
Appeal No. 2005-2435
Application No. 10/407,498
4
alone or in combination with a "ladder." According to the
examiner, this lack of clarity arises because claim 13 begins
with the phrase "The safety device of Claim 1" (i.e., indicating a
"safety device" alone) whereas the body of the claim positively
recites "the ladder" (i.e., indicating the combination of a
"safety device" and a "ladder"). The appellant, on the other hand,
unambiguously states repeatedly that claim 13 is directed to the
subcombination of a "safety device" and that the claim recitation
concerning "the ladder ..." merely defines the environment with
which the safety device is configured to interact.
Consistent with the appellant's above noted explanation,
one having ordinary skill in this art would consider the language
of claim 13 as defining a "safety device" alone. The examiner's
opposing viewpoint appears to be based solely on his implicit
presumption that positive recitation of an element such as "the
ladder" in claim 13 necessarily indicates that the element is a
part of the claimed subject matter. We are aware of no authority
for such a presumption, and the examiner cites none. To the
contrary, the non-claimed environment was positively recited in
the claims of Orthokentics v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1 USPQ2d 1081, and these claims were held to comply with
the second paragraph requirements of § 112.
Appeal No. 2005-2435
Application No. 10/407,498
5
In light of the foregoing, we hereby reverse the examiner's
§ 112, second paragraph, rejection of claim 13.
We also hereby reverse the examiner's § 102 rejection of
claims 1-3, 5, 7-10 and 13-20 as being anticipated by Allred.
As correctly argued by the appellant, Allred contains no teaching
that his safety device includes an arm and a holding mechanism
for performing the attachment functions defined by independent
claim 1 as well as the other independent claims on appeal. In
response to this argument, the examiner makes the following
statements in the paragraph bridging pages 5-6 of the answer:
As concerns remarks pertaining to the use of
the ladder attachment of Allred, the examiner takes
the position that the "use" of a device is not given
patentable weight within an "apparatus" claim, and since
Allred clearly sets forth an "arm" having two ends with a
flexible portion therebetween, and holding mechanism that
can be used to attach to any kind of support or building,
the reference and rejections (as advanced above) appear
to the examiner to be appropriate.
It is well established, of course, that the patentability of
an apparatus claim is based on the apparatus rather than the manner
in which it is used. For example, see In re Casey, 370 F.2d 576,
579-80, 152 USPQ 235, 238 (CCPA 1967). Nevertheless, to anticipate
an apparatus claim, the prior art apparatus must not only possess
the claimed structure but also must possess at least the capability
of performing the functions required by the apparatus claim, and it
Appeal No. 2005-2435
Application No. 10/407,498
6
is the examiner's burden to establish the reasonableness of
believing that such functional limitations are an inherent
characteristic of the prior art apparatus. See Ex parte Levy,
17 USPQ2d 1461, 1463-64 (Bd. Pat. App. & Int. 1990) and Ex parte
Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int. 1986).
Here, the examiner has not even attempted much less succeeded
in establishing that Allred's safety device is capable of being
attached to a ladder and a structure in the manner required by
the appealed claims. Stated otherwise, the answer contains no
discussion at all of any technique for attaching patentee's safety
device to a ladder and to a structure in the manner required by the
appellant's claims. Under these circumstances, we are compelled
to determine that the examiner has failed to carry his burden
of establishing a prima facie case of anticipation based on his
implicit theory that the Allred device is inherently capable of
performing the attachment functions of the claims before us.
Compare In re Schreiber, 128 F.3d 1473, 1477, 44 USPQ2d 1429, 1432
(Fed. Cir. 1997).
For analogous reasons, the § 103 rejection of claims 4, 11 and
12 over Allred likewise is hereby reversed. Even if the Allread
safety device were modified in the matter proposed by the examiner
in these rejections, there still would be lacking a prima facie
Appeal No. 2005-2435
Application No. 10/407,498
7
case for believing that the so-modified device would be inherently
capable of performing the attachment functions defined by the
appellant's independent claims. That is to say, the § 103
rejection under review is deficient in the same manner as the
previously discussed § 102 rejection.
As for the § 103 rejection of claim 6 over Allred in view of
Micro Mark Catalogue, the examiner concludes that:
"[I]t would have been obvious to one of ordinary
skill in the art at the time the invention was made to
modify the holding mechanism of Allred by incorporating a
clamp, as taught by the Micro Mark Catalogue, in order to
more easily and securely removably attach the end of the
safety device to a structure" (Answer, pages 4-5).
We cannot agree. As explained by the appellant, the here applied
references contained no teaching or suggestion for the combination
proposed by the examiner. Indeed, a clamp of the type taught by
Micro Mark Catalogue is plainly incompatible with Allred's teaching
of the manner in which his safety device is to be used. Under
these circumstances, it is reasonably apparent that the examiner's
conclusion of obviousness is based upon impermissible hindsight.
See W. L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert denied, 469 U.S. 851
(1984).
Appeal No. 2005-2435
Application No. 10/407,498
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It follows that we also hereby reverse the § 103 rejection of
claim 6 over Allred in view of Micro Mark Catalogue.
OTHER ISSUES
We consider it appropriate to emphasize that our above noted
opinion does not forestall the possibility that a prima facie
case of anticipation may be established under an inherency theory
against, for example, appealed claim 1 based on the Allred patent.
As fully explained in this opinion, the § 102 rejection of this
claim is deficient because the examiner had not even attempted to
provide any analysis in support of a belief that patentee's safety
device possesses the inherent capability of performing the
attachment functions of claim 1. Therefore, upon return of this
application to the jurisdiction of the Examining Corps, it would
behoove the Examiner as well as the appellant to consider whether
the safety device of Allred inherently possesses the functionally
defined attachment limitations of, for example, appealed claim 1.
See In re Schreiber, 128 F.3d at 1477, 44 USPQ at 1431-32.
Similarly, it would behoove the Examiner as well as the
appellant to consider whether other prior art apparatus might
render at least certain of the appealed claims unpatentable
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Application No. 10/407,498
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based on an inherency theory. For example, the examiner and the
appellant should consider whether such a theory would support a
finding that appealed claim 1 is anticipated by such prior art
apparatus as a bungee cord having a metal hook at each end. Again,
see In re Schreiber, Id.
SUMMARY
We have reversed each of the § 112 (second paragraph),
§ 102 and § 103 rejections advanced on this appeal because in
each rejection the examiner has failed to carry his burden of
establishing a prima facie case of unpatentability. See In re
Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).
Appeal No. 2005-2435
Application No. 10/407,498
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The decision of the examiner is reversed.
REVERSED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
BRG/jrg
Appeal No. 2005-2435
Application No. 10/407,498
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Jeffrey V. Bamber
7567 Pinehurst Drive
Cincinnati, OH 45244