Ex Parte Jones

Board of Patent Appeals and Interferences

Mar 20, 2009

09954838 (B.P.A.I. Mar. 20, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte D. KEITH JONES
____________

Appeal 2008-4395
Application 09/954,838
Technology Center 3600
____________

Decided:1 March 20, 2009
____________

Before LINDA E. HORNER, MICHAEL W. O’NEILL, and
STEFAN STAICOVICI, Administrative Patent Judges.

HORNER, Administrative Patent Judge

DECISION ON APPEAL

1 The two month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the decided date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).
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STATEMENT OF THE CASE
D. Keith Jones (Appellant) seeks our review under 35 U.S.C. § 134 of
the Examiner’s decision rejecting claims 9-11, 13, 14, and 16. Claims 1-8,
12, and 18-21 have been canceled, and claims 15, 17, and 22 are withdrawn
from consideration and are not part of this appeal. We have jurisdiction
under 35 U.S.C. § 6(b) (2002).

SUMMARY OF DECISION
We AFFIRM.

THE INVENTION
The Appellant’s claimed invention is a safety line for preventing
injury from falls from elevated positions during climbing and descending.
Spec. 1:12-13. Claim 9, reproduced below, is representative of the subject
matter on appeal.
9. A safety rope system for preventing injury
to a user should the user fall from an elevated
position, the user being supported in the elevated
position by a platform, seat, or other device, the
user not being supported by the safety rope system
except in the case of a fall from, or failure of, the
platform, seat, or other device, the safety rope
system comprising:
a safety harness to be worn by the user;
a standing rope line for attachment to a tree,
pole, or the like, with a first end of the standing
rope line being adapted to be secured to the tree,
pole, or the like; and
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a sliding rope coupler for attaching the
safety harness to the standing rope line, the sliding
rope coupler comprising a length of rope with
multiple loops wrapped about the standing line of
rope to be slidable along at least a portion of the
length of the standing rope line, with the sliding
rope coupler having its ends joined together for
attaching the safety harness thereadjacent, wherein
said sliding rope coupler is freely repositionable
along said standing rope line when not loaded, but
resists sudden downward movement relative to
said standing rope line when under load,
wherein the safety harness, the standing rope
line, and the sliding rope coupler do not support
the weight of the user except in the event that the
platform, seat, or other device should fail or the
user should fall off thereof.

THE REJECTIONS
The Examiner relies upon the following as evidence of
unpatentability:
Wagner US 4,090,584 May 23, 1978
Van Patten US 4,493,391 Jan. 15, 1985
Ascherin US 6,059,266 May 9, 2000
Miller GB 2 259 855 A Mar. 31, 1993
The Appellant seeks review of the following Examiner’s rejections:
1. Claims 9, 10, 14, and 16 under 35 U.S.C. § 102(b) as anticipated by
Miller.
2. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Miller and
Van Patten.
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3. Claim 13 under 35 U.S.C. § 103(a) as unpatentable over Miller and
Ascherin.
4. Claim 16 under 35 U.S.C. § 103(a) as unpatentable over Miller and
Wagner.
The Appellant also requests that we consider the patentability of
withdrawn claims 15 and 17 in view of the art of record. App. Br. 3, 5, 11.
We decline to render an opinion as to the patentability of claims 15 and 17,
which are not properly before us in this appeal.

ANTICIPATION REJECTION
ISSUES
The Examiner found Miller anticipates the system of claims 9, 10, 14,
and 16. Ans. 4. The Appellant contends that Miller does not anticipate
claim 9 because it does not disclose the passive use of a sliding rope coupler
as claimed. App. Br. 7. The Appellant also argues that Miller does not
anticipate claim 16 because it does not disclose a belt harness. App. Br. 8.
The issues presented by this rejection are:
Has the Appellant shown the Examiner erred in finding that Miller
anticipates the safety rope system of claim 9?
Has the Appellant shown the Examiner erred in finding that Miller
discloses a safety harness comprising a belt, as recited in claim 16?

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FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d
1422, 1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. Miller discloses a method and device for remotely lowering an
incapacitated climber suspended by ropes. Miller 1, ll. 1-4.
2. Miller’s device includes a first rope 1 hung over a branch of a tree,
where one end 4 of the rope is tied to a karabiner 5, which is
attached to a climber’s harness 3, and the other end of the first rope
1 hangs toward the ground. Miller 3, l. 33 - 4, l. 4; Fig. 1.
3. Miller’s device further includes a second rope 6 having its ends
joined together and attached to the climber’s harness 3 via a
karabiner 8, where a length of the second rope 6 has multiple loops
wrapped around the first rope 1 in a Prusik knot 9. Miller 4, ll. 4-
11, Fig. 1.
4. Miller discloses that the device can be used by a climber to ascend
and descend a tree as follows:
[W]hen a climber is suspended in the harness 3,
the loop of rope formed by the first and second
ropes suspend the climber. The climber can climb
up the tree 10 by releasing some of the pressure on
the second rope 6 enabling the prussic [sic] knot 9
to be slid up the first rope 1. This can be done by
using one hand to pull on the first rope 1 whilst
sliding the prussic [sic] knot 9 up with the other
hand. To descend, the climber can simply apply a
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pressure to the upper portion of the prussic [sic]
knot 9 to release the grip of this knot on the first
rope. In this manner a climber is able to ascend
and descend an object to be climbed such as a tree
10 in a simple and safe manner.
Miller 4, ll. 12-24.
5. Miller discloses that the Prusik knot 9 “grips the first rope 1 when
the second rope 6 has a load applied thereto” so that “if the climber
should become in any way incapacitated and unable to apply the
required downward pressure on the prussic [sic] knot 9, then the
climber will remain suspended.” Miller 4, ll. 11-12 and 25-28.
6. Thus, Miller discloses that in order to move the knot 9 up or down
the first rope, the user must release at least some of the pressure on
the second rope so that the knot is not under load.
7. Miller also discloses that should the climber become incapacitated,
akin to a fall from his position along the tree, the knot 9 will grip
the first rope to break the climber’s fall and keep him suspended.
8. The harness 3 disclosed in Miller includes a belt. Miller, Fig. 1.
9. The Appellant does not contest the Examiner’s finding that
progressive braking action is an inherent characteristic of a Prusik
hitch. Ans. 5; App. Br. passim; Reply Br. passim.

PRINCIPLES OF LAW
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
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art reference.” Verdegaal Bros. v. Union Oil Co. of California, 814 F.2d
628, 631 (Fed. Cir. 1987). To establish anticipation, every element and
limitation of the claimed invention must be found in a single prior art
reference, arranged as in the claim. Karsten Mfg. Corp. v. Cleveland Golf
Co., 242 F.3d 1376, 1383 (Fed. Cir. 2001). In other words, there must be no
difference between the claimed invention and the reference disclosure, as
viewed by a person of ordinary skill in the field of the invention. Scripps
Clinic & Research Found. v. Genentech Inc., 927 F.2d 1565, 1576 (Fed. Cir.
1991).
“It 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 (Fed. Cir. 1997) (citations omitted).
Further, “[i]f … the body of the claim fully and intrinsically sets forth the
complete invention, including all of its limitations, and the preamble offers
no distinct definition of any of the claimed invention's limitations, but rather
merely states, for example, the purpose or intended use of the invention, then
the preamble is of no significance to claim construction because it cannot be
said to constitute or explain a claim limitation.” Pitney Bowes, Inc. v.
Hewlett-Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999) (citations
omitted).

ANALYSIS
The Appellant argues claims 9, 10, and 14 as a group. App. Br. 5. As
such, we select claim 9 as the representative claim, and claims 10 and 14
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stand or fall with claim 14. 37 C.F.R. § 41.37(c)(1)(vii) (2008). We address
claim 16 separately infra.
Miller discloses the identical structure as the safety rope system of
claim 1. In particular, Miller shows a climber wearing a safety harness 3
(Fact 8). Miller’s device includes a first rope 1 secured to a branch of a tree
at one end and hanging freely toward the ground at the other end (Fact 2).
Miller’s device further includes a second rope 6 having its ends joined
together and attached to the climber’s harness 3, where a length of the
second rope 6 has multiple loops wrapped around the first rope 1 in a Prusik
knot 9 (Fact 3). Miller discloses that its Prusik knot 9 operates in the same
manner as recited in claim 1, viz., that it is freely repositionable along the
standing rope line when not loaded, but resists sudden downward movement
relative to the standing rope line when under load (Facts 4-7).
The Appellant distinguishes the claimed invention not by its structure
but by the use to which the claimed system is put. In particular, the
Appellant argues that Miller “discloses the use of a Prusik hitch for purposes
other than what is claimed” and contends that “the Appellant has discovered
that through the use of a Prusik hitch, an improved safety harness
arrangement can be achieved.” App. Br. 6. The Appellant explains that he
has “discovered that the Prusik hitch becomes progressively tighter as the
user falls, thereby providing a progressive braking action.” App. Br. 6.
This progressive braking action is an inherent characteristic of the
Prusik hitch (Fact 9). The Appellant has not asserted that his Prusik hitch
differs in any way structurally from the Prusik hitch of Miller, and on the
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contrary, the Appellant admits that he “has not invented the Prusik hitch.”
App. Br. 6. The Appellant’s mere discovery of a new use for the known
Prusik hitch and safety system of Miller is not sufficient to patentably
distinguish the claimed structure from Miller’s device. See In re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997).
The Appellant further argues that in use the Miller rope and knot are
constantly load-bearing and that Miller does not show passive use of a rope
knot for arresting a fall. App. Br. 6-7 (directing the Board’s attention to the
claim language that recites “wherein the safety harness, the standing rope
line, and the sliding rope coupler do not support the weight of the user
except in the event that the platform, seat, or other device should fail or the
user should fall off thereof.”). Again, the claim language recites an intended
use of the claimed safety system, that it is used only for passive fall arrest
and not for climbing. The recitation of a particular use in the claim does not,
however, distinguish the claimed safety system’s structure from the system
disclosed in Miller.2 Further, Miller discloses that its system is intended to
arrest a climber’s fall such as when a climber becomes incapacitated during
climbing (Facts 1, 5, 7).

2 The recitations in the preamble that the user is supported in the elevated
position by a platform, seat, or other device and that the user is not
supported by the safety rope system except in the case of a fall from, or
failure of, the platform, seat, or other device, are merely additional
statements of intended use and do not constitute or explain any structural
claim limitations in the body of the claim. Pitney Bowes, Inc. v. Hewlett-
Packard Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999).
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We also disagree with the Appellant’s characterization of Miller’s
knot as being under “constant load” during use. As described in Miller,
when using the rope for ascending or descending a tree, the load on the knot
must be temporarily lifted periodically during ascent or descent so that the
knot may be slid up or down the standing line rope (Facts 4, 6). If a user
were to become incapacitated when the load on the knot had been lifted, the
knot would operate in the same manner as the Appellant’s to arrest the
climber’s fall from his position in the tree. As such, we find no error in the
Examiner’s rejection of claims 9, 10, and 14 as anticipated by Miller.
The Appellant further argues that claim 16 is separately patentable
because Miller does not show the feature of the belt harness. App. Br. 8.
Claim 16 does not recite, however, a “belt harness.” Rather, claim 16 recites
that the safety harness of claim 9 “comprises a belt.” The transitional term
“comprising”, which is synonymous with “including,” “containing,” or
“characterized by,” is inclusive or open-ended and does not exclude
additional, unrecited elements or method steps. See Mars Inc. v. H.J. Heinz
Co., 377 F.3d 1369, 1376 (Fed. Cir. 2004). As such, claim 16 broadly
covers any safety harness that includes a belt. Miller clearly shows in Figure
1 a climber wearing a harness 3 that includes a belt (Fact 8). As such, we
find no error in the Examiner’s rejection of claim 16 as anticipated by
Miller.

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OBVIOUSNESS REJECTIONS
ISSUES
The Examiner found claims 11, 13, and 16 are unpatentable over
Miller in view of Van Patten, Ascherin, and Wagner, respectively. The
Appellant argues that Van Patten, Ascherin, and Wagner fail to cure the
deficiencies of Miller and that Ascherin fails to disclose the sliding rope
coupler is made from a rope that has a smaller diameter than the standing
rope line, as recited in claim 13. App. Br. 8-10. The Appellant further
submitted objective evidence of secondary considerations of non-
obviousness. App. Br. 10-11; Declaration [of Bradley Fitzgerald] Under
Rule 1.132 Regarding Secondary Considerations of Non-Obviousness, dated
May 15, 2006 (Fitzgerald Decl.).
The issue presented by these rejections is:
Has the Appellant shown the Examiner erred in determining that the
subject matter of claims 11, 13, and 16 would have been obvious in view of
the teachings of Miller and Van Patten, Ascherin, or Wagner?

ADDITIONAL FINDINGS OF FACT
We find that the following enumerated findings are supported by at
least a preponderance of the evidence.
10. Van Patten discloses a safety device for lowering a person from
one height to a lower height including a life line 10 having a
carabiner 14 used as a fastening device to fasten the line 10 to a
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supporting structure. Van Patten, col. 1, ll. 5-7, col. 2, ll. 43-44;
Fig. 2.
11. Ascherin discloses a system for movement of loads including a
cord 50 made of standard one-half inch static kermantle rope used
throughout the Fire Rescue, and Urban Search and Rescue
communities and a second cord 90 tied in the form of a “Prussick”
[sic.] knot, which is connected to cord 50. Ascherin, col. 2, l. 66 –
col. 3, l. 4 and col. 3, ll. 12-14.
12. Ascherin does not disclose the diameter thickness of the second
cord 90. Ascherin, passim.
13. Ascherin discloses that Prusik knots are well-known in the art of
mountaineering, and serve to grip or clamp down on cord 50 in the
event of a malfunction on the winch side of pulley 20. Ascherin,
col. 3, ll. 20-23.
14. The Prusik hitch works based on friction between the surface area
of the Prusik rope and the surface area of standing line rope. As
such, one having ordinary skill in the art would understand that the
greater the difference between the diameter of the Prusik rope and
the standing line rope, the greater the ability for the Prusik hitch to
hold on the rope, and that the closer in size both ropes are, the less
efficient the gripping power of the Prusik hitch.
15. Wagner discloses a workman 17 standing on an elevated
scaffolding 18 and wearing a workman’s safety belt 19. Wagner,
col. 2, ll. 65-68; Fig. 1.
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16. The Summit product depicted in Exhibit 1 of the Fitzgerald
Declaration does not have a clip attached to the end of the standing
line rope. Fitzgerald Decl., Exhibit 1.
17. The Fitzgerald Declaration states that the North Starr Safety Line,
Lone Wolf, Loggy Bayou, and Hunter Safety System products
“include[ ] at least a sliding rope coupler comprising a [P]rusik
hitch coupled to a standing rope line.” Fitzgerald Decl., paras. 5-8.
18. The depiction of the North Starr Safety Line product, shown in
Exhibit 2 to the Fitzgerald Declaration, does not have a clip
attached to the end of the standing line rope. Further, it is
impossible to ascertain from the picture alone the relative
diameters of the Prusik hitch rope to the standing line rope.
Fitzgerald Decl., Exhibit 2.
19. The depiction of the Lone Wolf product, as shown and described in
Exhibit 3 to the Fitzgerald Declaration, does not have a clip
attached to the end of the standing rope line. Fitzgerald Decl.,
Exhibit 3, page 2 (Climber Use instructions) and page 3 (Tree
Attachment Rope instructions). It is impossible to ascertain from
the pictures alone the relative diameters of the Prusik hitch rope to
the standing line rope in the Lone Wolf product. Fitzgerald Decl.,
Exhibit 3.
20. It is impossible to ascertain from the depiction of the Loggy Bayou
safety line product, as shown in Exhibit 4 to the Fitzgerald
Declaration, whether the product has a clip attached to the end of
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the standing rope line or the relative diameters of the Prusik hitch
rope to the standing rope line. Fitzgerald Decl., Exhibit 4.
21. It is impossible of us to decipher from the depiction of the Hunter
Safety System product, as shown in Exhibit 5 to the Fitzgerald
Declaration, whether the product has a clip attached to the end of
the standing rope line or the relative diameters of the Prusik hitch
rope to the standing rope line. Fitzgerald Decl., Exhibit 5.

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, ___,
127 S. Ct. 1727, 1734 (2007). The question of obviousness is resolved on
the basis of underlying factual determinations including (1) the scope and
content of the prior art, (2) any differences between the claimed subject
matter and the prior art, (3) the level of skill in the art, and (4) where in
evidence, so-called secondary considerations. Graham v. John Deere Co.,
383 U.S. 1, 17-18 (1966). See also KSR, 550 U.S. at ___, 127 S. Ct. at 1734
(“While the sequence of these questions might be reordered in any particular
case, the [Graham] factors continue to define the inquiry that controls.”)
The Examiner has the initial burden of showing a prima facie case of
obviousness, and the Appellant has the burden on appeal to the Board to
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demonstrate error in the Examiner’s position. See In re Kahn, 441 F.3d 977,
985-86 (Fed. Cir. 2006) (“[t]o reject claims in an application under section
103, an examiner must show an unrebutted prima facie case of
obviousness…. On appeal to the Board, an applicant can overcome a
rejection [under § 103] by showing insufficient evidence of prima facie
obviousness or by rebutting the prima facie case with evidence of secondary
indicia of nonobviousness.”) (quoting In re Rouffet, 149 F.3d 1350, 1355
(Fed. Cir. 1998)).
When the Appellant provides rebuttal evidence, the Board must start
anew and weigh the evidence upon which the earlier conclusion of
obviousness was reached against the facts established by the rebuttal
evidence to reach a legal conclusion of obviousness or non-obviousness.
See In re Piasecki, 745 F.2d 1468, 1472-73 (Fed. Cir. 1984) and In re
Rinehart, 531 F.2d 1048, 1052 (CCPA 1976).
To be given substantial weight in the determination of obviousness or
non-obviousness, evidence of secondary considerations must be relevant to
the subject matter as claimed, and therefore the examiner must determine
whether there is a nexus between the merits of the claimed invention and the
evidence of secondary considerations. Ashland Oil, Inc. v. Delta Resins &
Refractories, Inc., 776 F.2d 281, 305 n.42 (Fed. Cir. 1985), cert. denied, 475
U.S. 1017 (1986). In particular, an applicant asserting secondary
considerations to support its contention of non-obviousness bears the burden
of proof of establishing a nexus between the claimed invention and evidence
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of secondary considerations. For example, in the case of evidence of
commercial success, the Federal Circuit has acknowledged that the applicant
bears the burden of establishing a nexus, stating:
In the ex parte process of examining a patent
application, however, the PTO lacks the means or
resources to gather evidence which supports or
refutes the applicant’s assertion that the
sale constitutes commercial success. C.f. Ex parte
Remark, 15 USPQ2d 1498, 1503 (Bd. Pat. App. &
Int. 1990)(evidentiary routine of shifting burdens
in civil proceedings inappropriate in ex parte
prosecution proceedings because examiner has no
available means for adducing evidence).
Consequently, the PTO must rely upon the
applicant to provide hard evidence of commercial
success.
In re Huang, 100 F.3d 135, 139-40 (Fed. Cir. 1996). See also In re GPAC,
57 F.3d 1573, 1580 (Fed. Cir. 1995); In re Paulsen, 30 F.3d 1475, 1482
(Fed. Cir. 1994) (Evidence of commercial success of articles not covered by
the claims subject to the obviousness rejection was not probative of non-
obviousness).
Objective evidence of non-obviousness, including commercial
success, must be commensurate in scope with the claims. In re Tiffin, 448
F.2d 791 (CCPA 1971) (evidence showing commercial success of
thermoplastic foam “cups” used in vending machines was not commensurate
in scope with claims directed to thermoplastic foam “containers” broadly).
In order to be commensurate in scope with the claims, the commercial
success must be due to claimed features, and not due to unclaimed features.
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Joy Technologies Inc. v. Manbeck, 751 F. Supp. 225, 229 (D.D.C. 1990),
aff’d, 959 F.2d 226, 228 (Fed. Cir. 1992) (Features responsible for
commercial success were recited only in allowed dependent claims, and
therefore the evidence of commercial success was not commensurate in
scope with the broad claims at issue.). Gross sales figures do not show
commercial success absent evidence as to market share, Cable Electric
Products, Inc. v. Genmark, Inc., 770 F.2d 1015, 1026-27 (Fed. Cir. 1985), or
as to the time period during which the product was sold, or as to what sales
would normally be expected in the market, Ex parte Standish, 10 USPQ2d
1454, 1458 (BPAI 1988).
With regard to evidence of copying by others, “more than the mere
fact of copying by an accused infringer is needed to make that action
significant to a determination of the obviousness issue.” Cable Electric
Products, 770 F.2d at 1028.

ANALYSIS
Rejection of claim 11 as unpatentable over Miller and Van Patten
Claim 11 depends from claim 9 and further recites “wherein said
standing rope line comprises a clip.”
Van Patten discloses a safety device for lowering a person from one
height to a lower height including a life line 10 having a carabiner 14 used as
a fastening device to fasten the line 10 to a supporting structure (Fact 10).
The Examiner determined that it would have been obvious to provide the
rope line 1 of Miller with a clip, as taught by Van Patten, to form a loop with
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his line. Ans. 4. The Appellant does not contest the Examiner’s rationale
for combining the teachings of Miller and Van Patten or the Examiner’s
finding as to the scope and content of Van Patten. Rather, the Appellant
argues that Van Patten fails to cure the deficiencies of Miller because Van
Patten fails to disclose, teach, or suggest the passive use of a sliding rope
coupler or Prusik knot. As we found supra, in our analysis of claim 9,
Miller has no deficiencies in this regard, as it discloses the use of a sliding
rope coupler and Prusik knot to arrest a climber’s fall. As such, the
Appellant has not shown the Examiner erred in setting forth a prima facie
case of obviousness.
We now consider anew the issue of obviousness, carefully evaluating
and weighing both the evidence relied upon by the Examiner and the
objective evidence of non-obviousness provided by the Appellant. In
particular, we consider the evidence set forth in the Fitzgerald Declaration
and accompanying Exhibits as it pertains to the obviousness of the subject
matter of claim 11. We note at the outset that neither the Summit product
nor the competitors’ products referenced in the Fitzgerald Declaration
appear to have a clip attached to the standing rope line (Facts 16-21). Thus,
neither the evidence of sales of Summit’s own product, nor the evidence of
copying by competitors’ products, has a nexus to the invention as claimed in
claim 11.
We now examine the Appellant’s evidence of commercial success.
The declarant offered evidence of actual sales of Summit’s adjustable safety
ropes and Summit’s treestands and harnesses, which each incorporate the
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adjustable safety rope. Fitzgerald Decl., para. 4. As we explained, because
Summit’s adjustable safety rope, as shown in Exhibit 1, does not include a
clip on the standing rope line, the evidence of commercial sales has no nexus
to the invention of claim 11 such that the evidence is not commensurate with
the claimed invention. Further, the evidence of sales of Summit’s treestands
and harnesses is even less related to the claimed safety system because the
Appellant has offered insufficient evidence to show that these sales are due
to the nature of the claimed invention, as opposed to other economic and
commercial factors unrelated to the technical quality of the claimed subject
matter. In other words, because the claimed safety system was sold along
with treestands and harnesses, the consumers could have decided to purchase
these products based on desirable features other than the claimed subject
matter.
Even if we were to find a sufficient nexus between this evidence of
commercial success and the claimed invention, the Appellant has failed to
provide persuasive evidence as to market share so as to put the evidence of
gross sales figures into perspective in the context of the particular market at
hand. In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996) (without evidence
that the sales are a substantial quantity in the relevant market, “bare sales
numbers” are a “weak showing” of commercial success, if any); In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“[I]nformation solely
on numbers of units sold is insufficient to establish commercial success.”);
Kansas Jack, Inc. v. Kuhn, 719 F.2d 1144, 1150-51 (Fed. Cir. 1983) (“The
evidence of commercial success consisted solely of the number of units sold.
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There was no evidence of market share, of growth in market share, of
replacing earlier units sold by others or of dollar amounts, and no evidence
of a nexus between sales and the merits of the invention. Under such
circumstances, consideration of the totality of the evidence, including that
relating to commercial success, does not require a holding that the invention
would have been nonobvious at the time it was made to one skilled in the
art.”).
As to the evidence of purported competitor copying, because the
competitors’ safety rope products do not appear to include a clip on the
standing rope line, the evidence of copying has no nexus to the invention of
claim 11 such that the evidence is not commensurate with the claimed
invention (Facts 18-21). Even if we were to find a nexus, the evidence
submitted is insubstantial evidence of non-obviousness because the
Appellant has not adequately shown the competitors copied Summit’s
product despite the failure of protracted efforts by the copyists to design a
similar device, or that the competitors’ decision to copy was not simply out
of a general lack of concern for patent property on the part of the competitor
companies. See Cable Electric Products, 770 F.2d at 1028.
We agree with the Examiner that the structure disclosed in Miller is
identical to the system of claim 11 except for the clip and that one having
ordinary skill in the art would have had a rationale reason to add the clip of
Van Patten to the standing rope line of Miller to provide an easy way to form
a loop with his line. We further find that the evidence of commercial
success and copying has no nexus to the subject matter of claim 11 and is at
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best a weak showing of non-obviousness. Having now considered all the
evidence presented by Appellant against obviousness and weighing all the
evidence anew, it is our conclusion that the evidence for obviousness
outweighs the evidence against obviousness. See In re Fenton, 451 F.2d
640, 643 (CCPA 1971) (the court balanced the Patent Office’s case against
the strength of appellant's objective evidence of non-obviousness.) Based on
our review and consideration of all of the evidence before us, we conclude
that the subject matter of claim 11 would have been obvious to one having
ordinary skill in the art at the time the invention was made in view of Miller
and Van Patten.

Rejection of claim 13 as unpatentable over Miller and Ascherin
Miller shows the claimed system except for the sliding rope coupler
being of a smaller diameter than that of the standing rope line. Ascherin
discloses a system for movement of loads including a cord 50 made of
standard one-half inch rope and a second cord 90 tied in the form of a Prusik
knot, which is connected to cord 50 (Fact 11). Ascherin does not disclose
the diameter thickness of the second cord 90 (Fact 12). Ascherin discloses
that Prusik knots are well-known in the art of mountaineering, and serve to
grip or clamp down on cord 50 in the event of a malfunction on the winch
side of pulley 20 (Fact 13). The Prusik hitch generally, and in the case of
both Miller and Ascherin, works based on friction between the surface area
of the Prusik rope and the surface area of standing line rope. As such, one
having ordinary skill in the art would understand that the greater the
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difference between the diameter of the Prusik rope and the standing line
rope, the greater the ability for the Prusik hitch to hold on the rope, and that
the closer in size both ropes are, the less efficient the gripping power of the
Prusik hitch (Fact 14). Based on this understanding in the art of general
engineering principles, it would have been obvious to one of ordinary skill in
the art to make the sliding rope coupler of a smaller diameter than that of the
standing rope line, as recited in claim 13, to improve the gripping power of
the Prusik hitch.
We now consider anew the issue of obviousness, carefully evaluating
and weighing both the evidence relied upon by the Examiner and the
objective evidence of non-obviousness provided by the Appellant. In
particular, we consider the evidence set forth in the Fitzgerald Declaration
and accompanying Exhibits as it pertains to the obviousness of the subject
matter of claim 13.
The declarant offered evidence of actual sales of Summit’s adjustable
safety ropes and Summit’s treestands and harnesses, which each incorporate
the adjustable safety rope. Fitzgerald Decl., para. 4. Although not described
explicitly in the Fitzgerald Declaration, it appears from the photograph in
Exhibit 1 that the diameter of the Prusik knot line of Summit’s product is
smaller than the standing rope line. The Appellant has failed, however, to
adequately show that the commercial sales of Summit’s product have a
nexus to this claimed feature of claim 13. Further, the evidence of sales of
Summit’s treestands and harnesses are even less related to the claimed safety
system because the Appellant has offered insufficient evidence to show that
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these sales are due to the nature of the claimed invention, as opposed to
other economic and commercial factors unrelated to the technical quality of
the claimed subject matter. In other words, because the claimed safety
system was sold along with treestands and harnesses, the consumers could
have decided to purchase these products based on desirable features other
than the claimed subject matter. Even if we were to find a sufficient nexus
between this evidence of commercial success and the claimed invention, the
Appellant has failed to provide persuasive evidence as to market share so as
to put the evidence of gross sales figures into perspective in the context of
the particular market at hand.
As to the evidence of copying, the Appellant has failed to adequately
show that any of the competitors’ safety rope products actually copy the
claimed product feature of claim 13 (Facts 17-21). As such, the evidence of
copying has no nexus to the invention of claim 13 such that the evidence is
not commensurate with the claimed invention. Even if we were to find a
nexus, the evidence submitted is insubstantial evidence of non-obviousness
because the Appellant has not adequately shown the competitors copied
Summit’s product despite the failure of protracted efforts by the copyists to
design a similar device, or that the competitors’ decision to copy was not
simply out of a general lack of concern for patent property on the part of the
competitor companies.
The structure disclosed in Miller is identical to the system of claim 13
except for the relative diameters of the sliding rope coupler and the standing
rope line. Based on the function of the sliding rope lines in Miller and
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24
Ascherin and the fact that under general engineering principles, one of
ordinary skill in the art would know that it is desirable to have a difference
in diameters of the two lines to get a better frictional engagement and
gripping, it would have been obvious to use a smaller diameter sliding rope
coupler to improve the gripping power of the Prusik knot. We further find
that the evidence of commercial success and copying has no nexus to the
subject matter of claim 11 and is at best a weak showing of non-
obviousness. Having now considered all the evidence presented by
Appellant against obviousness and weighing all the evidence anew, it is our
conclusion that the evidence for obviousness outweighs the evidence against
obviousness. Based on our review and consideration of all of the evidence
before us, we conclude that the subject matter of claim 13 would have been
obvious to one having ordinary skill in the art at the time the invention was
made in view of Miller and Ascherin.

Rejection of claim 16 as unpatentable over Miller and Wagner
As we found supra, both Miller and Wagner disclose safety harnesses
comprising a belt (Facts 8 and 15). Because Miller alone anticipates claim
16, the subject matter of claim 16 is also obvious in view of the prior art. A
disclosure that anticipates under 35 U.S.C. § 102 also renders the claim
unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982).

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CONCLUSIONS
The Appellant has failed to show the Examiner erred in rejecting
claims 9, 10, 14, and 16 under 35 U.S.C. § 102(b) as anticipated by Miller.
The Appellant also failed to show the Examiner erred in determining
that the subject matter of claims 11, 13, 16 would have been obvious in view
of Miller and Van Patten, Ascherin, or Wagner.

DECISION
The decision of the Examiner to reject claims 9, 10, 11, 13, 14, and 16
is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED

ewh

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