Ex parte Gillespie

Board of Patent Appeals and Interferences

Oct 17, 2000

08815151 (B.P.A.I. Oct. 17, 2000)

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The opinion in support of the decision being entered
today was not written for publication and is not
precedent of the Board.
Paper No. 22
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte GARNET L. GILLESPIE
________________
Appeal No. 1999-1506
Application 08/815,151
________________
ON BRIEF
________________
Before CALVERT, FRANKFORT and NASE, Administrative Patent
Judges.
CALVERT, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 18
to 24 and 30 to 34, all the claims remaining in the
application.
The claims on appeal are drawn to a unitary ladder arm
type of support (claims 30 to 33) and a combination of such a
support with a ladder (claims 18 to 24 and 34), and are
Appeal No. 1999-1506
Application 08/815,151
All references herein to appellant's brief are to the1
brief filed on June 25, 1998.
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reproduced in Appendix "A" of appellant's brief. 1
The references applied in the final rejection are:
Moushon 1,972,064 Aug. 28, 1934
Benninger, Jr. (Benninger) 3,223,369 Dec. 14, 1965
Blann 4,099,693 Jul. 11, 1978
Revol et al. (Revol) 4,884,931 Dec. 5, 1989
Crockett 5,279,389 Jan. 18, 1994
The claims on appeal stand finally rejected on the
following grounds:
(1) Claims 30 and 31, anticipated by Blann, under 35
U.S.C.
§ 102(b);
(2) Claims 18 to 23 and 30 to 34, unpatentable over
Benninger in view of Crockett and/or Revol, under 35 U.S.C.
§ 103(a);
(3) Claim 33, unpatentable over Blann, under 35 U.S.C.
§ 103(a);
(4) Claim 24, unpatentable over Benninger and Crockett,
further in view of Moushon, under 35 U.S.C. § 103(a).
Rejections (1) and (3)
The examiner takes the position that claim 30 is readable
Appeal No. 1999-1506
Application 08/815,151
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on Blann, in that Blann discloses a support for use with a
ladder, the support having a cylindrical body 11, a locking
means 12, and a torque applying and retaining means 13, 17.
Appellant argues, inter alia, that upturned portion 12 of
Blann's support is not a locking means, as claimed. Citing
the definition of "locking" from Webster's Dictionary as "a
fastening together or state of
being fixed", appellant asserts that item 12 of Blann is not a
locking means because the support is self-leveling, which
means it must be freely movable at all times, and can easily
be moved further through the rung (brief, page 7). The
examiner has not responded to this argument.
It is fundamental that words of a claim are generally
given their ordinary and accustomed meaning, In re Paulsen, 30
F.3d 1475, 1480, 31 USPQ2d 1671, 1674 (Fed. Cir. 1994), which
meaning may appropriately be ascertained from the dictionary,
see Nike, Inc. v. Wolverine World Wide, Inc., 43 F.3d 644,
647, 33 USPQ2d 1038, 1040 (Fed. Cir. 1994). The most
pertinent definition of the verb "lock" in the Webster's
Appeal No. 1999-1506
Application 08/815,151
Webster's Third New International Dictionary (1971).2
We note that rejection (3) would not be sustainable in3
any event, since claim 33 is dependent on claim 32 and the
examiner does not point out, nor do we find, any disclosure in
Blann of a locking means with screw thread means as called for
by claim 32.
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Dictionary available to us is "to make fast or rigid by the2
engaging of parts or the action of a restraint, esp.
friction." Whether one applies this definition or the
definition quoted by appellant, supra, the upturned portion 12
of the Blann support cannot be said to "lock" the support to
the ladder rung, since it merely hooks onto the end of the
rung and does not fasten them together or make them "fast or
rigid". Accordingly, since Blann does not disclose a locking
means as claimed, neither rejection (1) nor rejection (3) will
be sustained. 3
Rejections (2) and (4)
Considering claim 30 in relation to the Benninger patent,
we find that Benninger discloses a ladder arm type of support
having an elongate substantially cylindrical body member 62
which near its first (inner) end carries a locking means 68
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Application 08/815,151
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which locks to the interior of the ladder rungs (col. 2, line
62, to col. 3, line 3). The ladder rungs of Benninger are not
disclosed as having an "irregular inner surface," as recited,
but this is not material to the question of patentability,
since the ladder is not included as part of the claimed
apparatus. At the second (outer) end of body member 62 is
attached a knob 48, which has outer peripheral projections
formed by grooves 50, 52 (see Figs. 3 and 4). This knob 48
constitutes a "torque applying and retaining means" as recited
in claim 30, for although Benninger does not disclose that
body member 62 is rotated about its central longitudinal axis,
knob 48 clearly would be capable of so rotating the member 62,
and "[i]t is well settled that the recitation of a new
intended use for an old product does not make a claim to that
old product patentable." In re Schreiber, 128 F.3d 1473,
1477, 44 USPQ 1429, 1431 (Fed. Cir. 1997). See also In re
Casey, 370 USPQ 576, 580, 152 USPQ 235, 238 (CCPA 1967)(the
manner or method in which a machine is to be utilized is not
germane to the issue of patentability of the machine itself).
Therefore, since all the structure recited in claim 30 is
readable on the apparatus disclosed by Benninger, rejection
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Application 08/815,151
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(2) of claim 30 will be sustained. While this is tantamount
to a holding that claim 30 is anticipated by Benninger under
35 U.S.C. § 102(b), it is proper to sustain the § 103(a)
rejection because "[t]he complete disclosure of an invention
in the prior art is the ultimate or epitome of obviousness".
In re Avery, 518 F.2d 1228, 1234, 186 USPQ 161, 166 (CCPA
1975).
The rejection of claim 31 will likewise be sustained,
since appellant has not argued that it is separately
patentable. Moreover, we note that on page 1 of the reply
brief appellant states that he is willing to cancel this
claim, apparently in response to the examiner's comment on
page 4 of the answer that the claim is "improper".
Dependent claim 32 calls for the locking means to be made
integral with the body member "by screw thread means". The
examiner's position as to this claim is not clearly set forth,
but evidently is that it would have been obvious to one of
ordinary skill in the art to modify the Benninger apparatus to
use screw-threaded means (a bolt) as the locking means in view
Appeal No. 1999-1506
Application 08/815,151
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of Crockett's disclosure of bolts 24, 26.
We will not sustain this rejection. Crockett does not
dislcose using bolts 24, 26 to lock the ends 20, 22 of members
14, 16 into the ladder rung, but rather bolts 24, 26 are
described as "stop bolts," such that (col. 4, lines 34 to 40):
When the insertable ends 20 and 22 are inserted into
opposite ends of a ladder rung and the ladder
support 10 is properly installed to the ladder into
which the insertable ends 20 and 22 are inserted,
stop bolt 24 prevents movement of the ladder support
in the direction of stop bolt 26 and stop bolt 26
prevents movement of the ladder support in the
direction of stop bolt 24.
We do not read this language as suggesting that bolts 24,
26 perform any locking functions, but rather that they act as
stops to prevent ends 20, 22 from being inserted too far into
the rung. Thus, since there is no teaching or suggestion in
Crockett for the use of bolts as a means for locking a member
into a ladder
rung, there is no basis for combining the references as the
Appeal No. 1999-1506
Application 08/815,151
Revol, the other secondary reference, does not disclose4
a screw-threaded locking means.
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examiner evidently proposes to do. 4
The rejection of claim 33, dependent on claim 32,
likewise will not be sustained.
We now turn to claim 18, which requires, inter alia, that
the locking means be "rigid in structure." Such a locking
means is not taught by Crockett because, as discussed above,
bolts 24, 26 of Crockett are stops, not locks.
The examiner alternatively asserts that it would have
been obvious to provide Benninger with a rigid locking means
in view of Revol, which discloses a device for anchoring a peg
in a wall, the device being inserted in a hole in the wall and
then pulled so that cone 7 expands socket 11 to anchor the peg
in the hole (col. 3, lines 39 to 58). However, after
considering the references and the arguments of appellant and
the examiner, we agree with appellant that Revol would not
suggest to one of ordinary skill substitution of its locking
mechanism for the lock 68 of Benninger. Assuming that Revol
constitutes analogous art, the lock disclosed therein is for
permanently locking a peg
Appeal No. 1999-1506
Application 08/815,151
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in a hole, whereas the lock 68 of Benninger is constructed to
allow the attachment (arm) 40 to be manually moved to
different locations on the ladder (col. 3, lines 3 to 7). It
is not
apparent, therefore, what motivation there would have been for
one of ordinary skill to permanently attach the Benninger
attachment at a single location on the ladder by using the
locking means disclosed by Revol, when such modification of
the Benninger attachment would vitiate the advantage of ready
relocation disclosed by Benninger (col. 1, lines 32 to 40).
It would not have been obvious for one skilled in the art to
so modify the Benninger device as to make it unsuitable for
its intended purpose. Ex parte Rosenfeld, 130 USPQ 113, 115
(Bd. Apps. 1961).
Rejection (2) will therefore not be sustained as to claim
18, or as to claims 19 to 23 and 34, dependent thereon.
Rejection (4) will not be sustained since the Moushon
reference, applied in rejection (4), does not supply the
deficiencies in the combination of Benninger and Crockett or
Revol discussed above.
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Application 08/815,151
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Conclusion
The examiner's decision to reject claims 18 to 24 and 30
to 34 is affirmed as to the rejection of claims 30 and 31
under 35 U.S.C. § 103(a), but is otherwise reversed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED-IN-PART
IAN A. CALVERT )
Administrative Patent Judge )
)
)
)
CHARLES E. FRANKFORT ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JEFFREY V. NASE )
Administrative Patent Judge )
Appeal No. 1999-1506
Application 08/815,151
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IAC/ki
Appeal No. 1999-1506
Application 08/815,151
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Garnet L. Gillespie
1606 Hannon Bay E.
Regina Sk S4V 0S8
CANADA