Ex parte Bogart

Board of Patent Appeals and Interferences

Aug 28, 2000

08732887 (B.P.A.I. Aug. 28, 2000)

The opinion in support of the decision being entered today was not written for
publication and is not binding precedent of the Board.
Paper No. 20
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte ROBERT C. BOGART
____________
Appeal No. 1999-1483
Application No. 08/732,887
____________
ON BRIEF
____________
Before CALVERT, ABRAMS, and JENNIFER D. BAHR, Administrative Patent Judges.
ABRAMS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final rejection of claims 1-4,
6-11 and 13, which are all of the claims pending in this application.
We REVERSE.
BACKGROUND
The appellant's invention relates to a foldable ladder having adjustable legs. An
understanding of the invention can be derived from a reading of exemplary claim 1, which
appears in the appendix to the appellant's Brief.
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Application No. 08/732,887
An issue arose as to which of the two Briefs (Papers No. 11 and 17) should be1
considered. The examiner decided in favor of the Brief filed on December 31, 1998, and
acted upon the claims as they were appended thereto (see Paper No.19).
The prior art references of record relied upon by the examiner in rejecting the
appealed claims are:
Burrows 419,821 Jan. 21, 1890
Busko 1,354,166 Sep. 28, 1920
Young 2,500,333 Mar. 14, 1950
Adamski et al. (Adamski) 4,029,223 Jun. 14, 1977
Kupfert 4,846,305 Jul. 11, 1989
High et al. (High) 5,590,739 Jan. 7, 1997
(filed Nov. 1, 1994)
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1-4, 6, 9 and 10 on the basis of Burrows and High.
(2) Claim 7 on the basis of Burrows, High and Young.
(3) Claim 8 on the basis of Burrows, High and Adamski.
(4) Claim 11 on the basis of Burrows, High and Kupfert.
(5) Claim 13 on the basis of Burrows, High and Busko.
Rather than reiterate the conflicting viewpoints advanced by the examiner and the
appellant regarding the above-noted rejections, we make reference to the Answer (Paper
No. 12) for the examiner's complete reasoning in support of the rejections, and to the Brief
(Paper No. 11) and Reply Brief (Paper No. 13) for the appellant's arguments thereagainst.1
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Application No. 08/732,887
OPINION
In reaching our decision in this appeal, we have given careful consideration to the
appellant's specification and claims, the applied prior art references, the respective
positions articulated by the appellant and the examiner, and the guidance provided by our
reviewing court. As a consequence of our review, we make the determinations which
follow.
As manifested in independent claim 1, the appellant’s inventive ladder comprises a
top step, two leg assemblies mounted to the top step and each having means for adjusting
the length thereof and a foot, a step assembly mounted to the top step and having a
plurality of steps and a foot, the step assembly foot and the two leg assembly feet forming
a tripod configuration,
means for pivoting the leg assemblies and the step assembly from a closed
position in which the leg assemblies and the step assembly [are extended,
sic] vertically downward from the top step to an angular position in which the
leg assemblies and the step assembly are angularly displaced from vertical
and oriented along radial axes positioned 120 degrees from one another in
the tripod configuration (emphasis added), and
means for locking each leg assembly and the step assembly to an angular
position along the radial axes positioned 120 degrees from one another
(emphasis added).
The examiner is of the opinion that the subject matter recited in this claim is rendered
obvious by the combined teachings of Burrows and High. A key finding in this rejection is
that in the Burrows ladder the leg assemblies and step assembly “are angularly displaced
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Application No. 08/732,887
along radial axes positioned 120 degrees from one another” (Answer, page 5) because
Burrows’ Figure 1 “depicts the angles between the step assembly foot and the two leg
assembly feet as being nearly equally spaced which would correlate to the angles between
. . . being 120 degrees” (Answer, page 10).
The test for obviousness is what the combined teachings of the prior art would have
suggested to one of ordinary skill in the art. See, for example, In re Keller, 642 F.2d
413, 425, 208 USPQ 871, 881 (CCPA 1981). In establishing a prima facie case of
obviousness, it is incumbent upon the examiner to provide a reason why one of ordinary
skill in the art would have been led to modify a prior art reference or to combine reference
teachings to arrive at the claimed invention. See Ex parte Clapp, 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, 1052 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
The examiner appears to have focused on the angular relationship between the feet
of the step assembly and the leg assemblies of the Burrows ladder when the ladder is in its
erected position. It is true that, as shown in Figure 1, the points at which the three units
touch the ground appear to be equidistant from one another. However, this does not
satisfy the terms of claim 1, which recites the invention not in terms of the relationship
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Application No. 08/732,887
between the feet of the assemblies at the points at which they contact the ground, but of the
angles between the axes along which the three assemblies are displaced during their
movement, which must be “along radial axes positioned 120 degrees from one another.”
There is no explanation in Burrows that specifies the relationship between the three
assemblies in a manner that can directly be related to the language of claim 1, so we are
left to analyzing the drawings to determine this. In the Burrows arrangement, the leg
assemblies are attached together at a mid-point and thus displace outwardly in a scissor-
like movement with both essentially in the same plane, which would place the axes along
which they move at 180 degrees to each other. The step assembly moves outwardly along
a radial axis that is at 90 degrees to the plane within which the leg assemblies move with
respect to one another. While it is possible to position the three assemblies of the
Burrows ladder so that the feet touch the ground at points equidistant from one another, it
is clear to us that the angular relationship of the axes of movement of these assemblies in
accomplishing this is not 120 degrees, as required by claim 1. Consideration of the
teachings of High, which was cited for its teaching of providing a ladder with adjustable
legs, does not cure this deficiency.
This being the case, the combined teachings of the two applied references fail to
establish a prima facie case of obviousness with regard to the subject matter recited in
claim 1. We therefore will not sustain the rejection of claim 1 or, it follows, of claims 2-4,
6, 9 and 10, which depend therefrom and stand rejected on the same grounds.
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Application No. 08/732,887
Further consideration of Young, Adamski, Kupfert and Busko, which individually
were added in the rejections against the remaining dependent claims, does not provide
teachings which will cure the defect in the combination of Burrows and High. The four
rejections that encompass dependent claims 7, 8, 11 and 13 are not sustained.
Another shortcoming in the examiner’s rejection of claim 1 that is worthy of mention
is that claim 1 sets forth the means for pivoting the step assembly and the leg assemblies
in means-plus-function format, which must be evaluated in the context of the sixth
paragraph of 35 U.S.C. § 112. In order to meet a means-plus-function limitation, the prior
art must perform the identical function recited in the means limitation, and perform that
function using the structure disclosed in the appellant’s specification or an equivalent
structure. See Valmont Indus. Inc. v. Reinke Mfg. Co., 983 F.2d 1039, 1042, 25 USPQ2d
1451, 1454 (Fed. Cir 1993). As to the first requirement, even if one were to consider that
the Burrows system accomplishes the same function as the claimed system, it does not do
it using the same structure disclosed in the appellant’s specification. In this regard, the
appellant’s means for pivoting the three assemblies comprises three pairs of spaced
flanges (22) which are fixedly mounted to the underside of the top step (16) in such a
fashion that the pivotally mounted assemblies mounted thereon will be displaced along
axes that are oriented 120 degrees to one another. However, in the Burrows ladder, each
of the leg assemblies is mounted on flanges attached to the sides of the legs (12) of the
ladder assembly through pivotally attached intermediate links (29), and the flanges are
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Application No. 08/732,887
oriented at 180 degrees to each other. Clearly, this is not the same structure as that
disclosed by the appellant.
While there is no litmus test for an “equivalent” that can be applied with absolute
certainty and predictability, there are several indicia that are sufficient to support a
conclusion of equivalency or non-equivalency. These include:
(1) Whether the prior art elements perform the function specified in the claim
in substantially the same way, and produce substantially the same results as
the corresponding structure disclosed in the specification. Odetics Inc. v.
Storage Tech. Corp., 185 F.3d 1259, 1267, 51 USPQ2d 1225, 1229-30
(Fed. Cir. 1999).
(2) Whether a person of ordinary skill in the art would have recognized the
interchangeability of the elements shown in the prior art for the
corresponding elements disclosed in the specification. Al-Site Corp. v. VSI
Int'l Inc., 174 F.3d 1308, 1316, 50 USPQ2d 1161, 1165 (Fed. Cir. 1999).
(3) Whether the prior art elements are the structural equivalents of the
corresponding elements disclosed in the specification. In re Bond, 910
F.2d 831, 833, 15 USPQ2d 1566, 1568 (Fed. Cir. 1990).
(4) Whether there are insubstantial differences between the prior art
elements and the corresponding elements disclosed in the specification.
IMS Technology, Inc. v. Haas Automation, Inc., 206 F.3d 1422, 1436, 54
USPQ2d 1129, 1138-39 (Fed. Cir. 2000).
As a result of our review, we have determined that there is nothing in the record which
would support answering any of the above questions in the affirmative. This being the
case, we conclude that the prior art structure does not qualify as being an equivalent under
35 U.S.C. § 112, sixth paragraph, of the structure disclosed by the appellant in the
specification.
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Application No. 08/732,887
Since neither of the requirements set forth in Valmont has been met by Burrows, the
applied prior art fails to establish a prima facie case of obviousness with regard to the
subject matter recited in claim 1 on the basis of the sixth paragraph of 35 U.S.C. § 112,
and the rejection of independent claim 1, and all of the dependent claims, also cannot be
sustained on this ground.
CONCLUSION
None of the five rejections is sustained.
The decision of the examiner is reversed.
IAN A. CALVERT )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
NEAL E. ABRAMS ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
NEA/cam
FRANK J MCGUE
10801 N 32ND STREET
SUITE 5
PHOENIX, AZ 85028
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