Ex Parte Camaioni

Board of Patent Appeals and Interferences

Mar 30, 2007

10660988 (B.P.A.I. Mar. 30, 2007)

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not written for publication and is not binding precedent of the Board.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 FRANK CAMAIONI
_____________

Appeal No. 2006-3346
Application No. 10/660,988
Technology Center 3600
______________

Decided: March 30, 2007
_______________

Before TERRY J. OWENS, STUART S. LEVY, and ANTON W. FETTING,
Administrative Patent Judges.

LEVY, Administrative Patent Judge.

DECISION ON APPEAL
Appellant appeals under 35 U.S.C. § 134 from the Examiner's Final
Rejection of claims 2-12 and 14-21. Claim 1 has been cancelled. Claim 13 has
been withdrawn from consideration (Br. 2). We have jurisdiction over this appeal
under 35 U.S.C. § 6(b) (2002).

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Application 10/660,988

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We REVERSE.
STATEMENT OF THE CASE
Appellant's invention relates to an add-on extension section for a
conventional ladder (Specification 2).
Claim 11 is representative of the invention, and is reproduced as follows:
11. A ladder extension section adapted to be removably mounted to a
conventional ladder, said ladder extension section comprising a pair of
opposed sidewalls, a plurality of transversely oriented rungs extending
between said pair of opposed sidewalls, and means on said ladder extension
section for engaging at least one rung of a conventional ladder for
removably mounting said ladder extension section to a conventional ladder,
the distance between the pair of opposed sidewalls of said ladder extension
section being greater than the distance between the opposed sidewalls of a
conventional ladder such that the sidewalls of said ladder extension section
extend beyond the sidewalls of a conventional ladder when said ladder
extension section is mounted to a conventional ladder.

The prior art references of record relied upon by the Examiner in rejecting
the appealed claims are:
Edmunds US 0,124,940 Mar. 26, 1872
Parent US 0,146,274 Jan. 6, 1874
Bauer US 1,600,572 Sep. 21, 1926
Brugner US 1,672,020 Jun. 5, 1928
Jenkins US 2,471,110 May 24, 1949
Stanley US 2,720,354 Oct. 11, 1955
Lee UK 2 118 236 A Oct. 26, 1983
Hulme US 4,519,478 May 28, 1985

Claims 11, 12, and 14-20 stand rejected under 35 U.S.C. § 112 (second
paragraph) as being indefinite.
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Application 10/660,988

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Claims 11, 12, 14-16, and 18-20 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Brugner.
Claims 2-8, 11, 12, and 14-21 stand rejected under 35 U.S.C. § 102(b) as
being anticipated by Lee.
Claims 2-5, 12, and 21 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Hulme.
Claims 2-7, 12, and 21 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Jenkins in view of Lee.
Claim 17 stands rejected under 35 U.S.C. § 103(a) as being unpatentable
over Brugner in view of Bauer.
Claims 8-10 stand rejected under 35 U.S.C. § 103(a) as being unpatentable
over Edmonds in view of Stanley.
Claims 6 and 7 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Edmonds in view of Parent.
Claims 6 and 7 stand rejected over 35 U.S.C. § 103(a) as being unpatentable
over Edmonds in view of Lee.
Rather than reiterate the conflicting viewpoints advanced by the Examiner
and the Appellant regarding the above-noted rejections, we make reference to the
Examiner’s Answer (Hereinafter: Answer, mailed August 7, 2006) for the
Examiner's complete reasoning in support of the rejections, and to the Corrected
Appeal Brief (Hereinafter: Br., filed February 28, 2006) and Reply Brief
(Hereinafter: Reply Br., filed June 26, 2006) for the Appellant's arguments
thereagainst.
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Application 10/660,988

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Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to make
in the Brief have not been considered. See 37 C.F.R. § 41.37(c)(1)(vii)(eff. Sep.
13, 2004).

OPINION
In reaching our decision in this appeal, we have carefully considered the
subject matter on appeal, the rejections advanced by the Examiner, and the
evidence of indefiniteness, anticipation, and obviousness relied upon by the
Examiner as support for the rejections. We have, likewise, reviewed and taken
into consideration, in reaching our decision, Appellant’s arguments set forth in the
Briefs along with the Examiner's rationale in support of the rejections and
arguments in rebuttal set forth in the Examiner's Answer. Upon consideration of
the record before us, we make the determinations which follow.
We begin with the rejection of claims 11, 12, and 14-20 under 35 U.S.C.
§ 112 (second paragraph). The Examiner contends (Answer 4) that because the
preamble only calls for the extension, the limitations regarding the conventional
ladder render the claims indefinite. Appellant asserts (Br. 7) that reference to a
conventional ladder defines the operating environment of the extension ladder and
the functional relationship between the extension ladder and the conventional
ladder to which the extension is mounted.
From our review of the record, we find that the conventional ladder as
recited in these claims is not part of the claimed combination, but rather that the
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ladder extension is made for use with a conventional ladder. Accordingly, we
agree with Appellant that the reference to the conventional ladder defines the
operating environment of the extension ladder. As such, we hold that an artisan
would understand the metes and bounds of the claims. The rejection of claims 11,
12, and 14-20 under 35 U.S.C. § 112 (second paragraph) is not sustained.
We turn next to the rejection of claims 11, 12, 14-16, and 18-20 under 35
U.S.C. § 102(b) as being anticipated by Brugner. To support a rejection of a claim
under 35 U.S.C. § 102(b), it must be shown that each element of the claim is
found, either expressly described or under principles of inherency, in a single prior
art reference. See Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772, 218 USPQ
781, 789 (Fed. Cir. 1983).
The Examiner contends (Answer 4) that the extension of Brugner is capable
of being used with conventional ladders having a width less than or abutting
Brugner's extension rails. Appellant asserts (Br. 10) that the express disclosure of
Brugner is exactly opposite to that disclosed by Appellant because ladder section
29 is slightly narrower than the ladder section 2. From our review of Brugner, we
find that "29 indicates an additional ladder section which may be detachably
secured to the ladder section 2 when the device is converted into an extension
ladder for the purpose of making a longer ladder. The ladder section 29 is slightly
narrower than the ladder section 2." (Brugner, p. 2, ll. 79-85). From this
description of Brugner, we find that the reference makes the extension 29
narrower, not wider, than ladder 2. The purpose of this, as described by Brugner,
is for the sides of the extension 29 to rest between the sides 11 of ladder section 2.
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Thus, we do not find that it would have been inherent to use the extension of
Brugner with a ladder that has narrower sides than the extension. Inherency cannot
be established by possibilities or probabilities, but must necessarily flow from the
teachings of the prior art. It follows that we cannot sustain the rejection of claims
11, 12, 14-16, and 18-20 under 35 U.S.C. § 102(b).
We turn next to the rejection of claims 2-8, 11, 12, and 14-21 under 35
U.S.C. § 102(b) as being anticipated by Lee. The Examiner contends (Answer 5)
that extension 10 of Lee is capable of being used with conventional ladders having
a width abutting Lee's extension sidewalls. Appellant asserts (Br. 11) that Lee
describes an attachment for stabilizing a ladder to prevent lateral sway, and does
not suggest an extension for a ladder. From our review of Lee, we find that the
reference is directed to a ladder attachment (Lee, p. 1, l. 5). We find no description
of a ladder extension, and the Examiner has not pointed to any teaching of Lee that
can be considered a ladder extension. We are cognizant that bars 14, 15 extend
between limbs 13 (Lee, p. 1, ll. 112-118). However, these bars do not constitute
steps of a ladder and are therefore not rungs1 of a ladder. Each of independent
claims 11, 18, and 21 recite rungs that extend between the opposed sidewalls of the
ladder extension. It follows that we cannot sustain the rejection of claims 2-8, 11,
12, and 14-21 under 35 U.S.C. § 102(b) as being anticipated by Lee.
We turn next to the rejection of claims 2-5, 12, and 21 under 35 U.S.C. §
102(b) as being unpatentable over Hulme. The Examiner contends (Answer 5) that
Hulme in figure 7 shows a ladder extension 120 with engaging means 160 and a

1 Webster's New World Dictionary © 1972.
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ladder 110. Appellant contends that in Hulme, the narrower base section includes
means for engaging the rungs of the wider section, which is exactly the opposite of
the express recitation of independent claim 21 that means are provided on the
extension for engaging a rung on a conventional ladder.
From our review of Hulme, we find that in figures 7 and 8, the width of the
extension 110 is narrower than the width of ladder L. In figure 9, the extension
112 is wider than the ladder 122. In this embodiment, the means for connecting
the ladder extension to the ladder are located on the ladder, not on the extension as
claimed. Accordingly, we find no embodiment in Hulme where the extension is
wider than the ladder and the means for connecting the extension to the ladder are
on the extension. It follows that we cannot sustain the rejection of claims 2-5, 12,
and 21 under 35 U.S.C. § 102(b) as being anticipated by Hulme.
We turn next to the rejection of claims 2-5, 12, and 21 under 35 U.S.C.
§ 102(b) as being anticipated by Edmonds. In rejecting claims under 35 U.S.C.
§ 103, it is incumbent upon the Examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the Examiner is expected to make the
factual determinations set forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148
USPQ 459, 467 (1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or to combine prior art
references to arrive at the claimed invention. Such reason must stem from some
teaching, suggestion, or implication in the prior art as a whole or knowledge
generally available to one having ordinary skill in the art. Uniroyal, Inc. v.
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Rudkin-Wiley Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988);
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227
USPQ 657, 664 (Fed. Cir. 1985); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732
F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the
Examiner are an essential part of complying with the burden of presenting a prima
facie case of obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992). If that burden is met, the burden then shifts to the
Appellant to overcome the prima facie case with argument and/or evidence.
Obviousness is then determined on the basis of the evidence as a whole. See id.; In
re Hedges, 783 F.2d 1038, 1039, 228 USPQ 685, 686 (Fed. Cir. 1986); In re
Piasecki, 745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984); and In re
Rinehart, 531 F.2d 1048, 1052, 189 USPQ 143, 147 (CCPA 1976).
The Examiner contends (Answer 5) that Edmonds shows engaging means at
C, E, and F. Appellant contends (Br. 12) that Edmonds discloses a device for
splicing two ladders together and does not disclose a conventional ladder in
combination with a ladder extension. From our review of Edmonds, we find that
although extension B is wider than ladder A, the splicing mechanism C, E, F is not
on the ladder extension as claimed, but is located between the ladders. It follows
that we agree with Appellant that Edmonds fails to anticipate independent claim
21. The rejection of claims 2-5, 12, and 21 under 35 U.S.C. § 102(b) is not
sustained.
We turn next to the rejection of claims 2-7, 12, and 21 under 35 U.S.C.
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9
§ 103(a) as being unpatentable over Jenkins in view of Lee. The Examiner
contends (Answer 5) that Jenkins does not show the first and second pairs of
engaging elements. To make up for this deficiency of Jenkins, the Examiner turns
to Lee for a suggestion of first and second pairs of engaging elements 24 and 25.
Appellant contends (Br. 13-14) that in Jenkins, the top section of the ladder does
not engage the rungs of the ladder section, but rather that openings are drilled in
the top and bottom sections to retain the two sections together. With respect to
Lee, Appellant refers to the earlier presented remarks.
At the outset, we note that the limitation listed by the Examiner as not being
found in Jenkins, namely the first and second pairs of engaging elements, is not
found in independent claim 21. Rather this limitation only appears in dependent
claim 6. In addition, it is unclear as to why claim 12 was included in this group as
claim 12 depends from claim 11, not claim 21. In any event, from our review of
Jenkins, we agree with Appellant that openings are provided in the inner and outer
ladder sections. We add that the openings receive pins 19, which keep the ladders
together. (Jenkins, col. 1, l. 47-col. 2, l. 6). Although we find from the description
of Lee that two pairs of hooks 24, 25 are used to connect the attachment to the
ladder (Lee, p. 2, ll. 10-25), we find that an artisan would not have been motivated
to replace the pins and holes of Jenkins with the plural sets of hooks of Lee
because Lee is not directed to a ladder extension. Thus, we find that the combined
teachings and suggestions of Jenkins and Lee would not have suggested the
language of claims 2-7, 12, and 21. Accordingly, we will not sustain the rejection
of claims 2-7, 12, and 21.
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We turn next to the rejection of claim 17 under 35 U.S.C. § 103(a) as being
unpatentable over Brugner in view of Bauer. The Examiner contends (Answer 6)
that Brugner does not show the claimed extension of the support element. To
overcome the deficiency of Brugner, the Examiner turns to Bauer for a suggestion
of providing a support element, shown at 70. We will not sustain the rejection of
claim 17 because Bauer does not make up for the basic deficiencies of Brugner, as
discussed, supra.
We turn next to the rejection of claims 8-10 under 35 U.S.C. § 103(a) as
being unpatentable over Edmonds in view of Stanley. The Examiner contends that
Stanley suggests the claimed support element. We will not sustain the rejection of
claims 8-10 because Stanley does not make up for the deficiencies of Edmonds, as
discussed, supra.
We turn next to the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as
being unpatentable over Edmonds in view of Parent. The Examiner contends
(Answer 7) that Parent suggests the claimed first and second engaging elements C,
E. We will not sustain the rejection of claims 6 and 7 because Stanley fails to
make up for the deficiencies of Edmonds, as discussed, supra.
We turn next to the rejection of claims 6 and 7 under 35 U.S.C. § 103(a) as
being unpatentable over Edmonds in view of Lee. We will not sustain the rejection
of claims 6 and 7 because Lee fails to make up for the deficiencies of Edmonds.

Appeal 2006-3346
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ORDER
The decision of the Examiner to reject claims 11, 12, and 14-20 under 35
U.S.C. § 112 (second paragraph) is reversed.
The decision of the Examiner to reject claims 2-8, 11, 12, and 14-21 under
35 U.S.C. § 102(b) is reversed.
The decision of the Examiner to reject claims 2-10, 12, 17, and 21 under 35
U.S.C. § 103(a) is reversed.
REVERSED

hh

Mark P. Stone
4th Floor
25 Third Street
Stamford, CT 06905