Ex parte May

Board of Patent Appeals and Interferences

Jul 9, 1999

08637717 (B.P.A.I. Jul. 9, 1999)

National stage application under 35 U.S.C. § 371 of international1
Application PCT/GB94/02719, filed December 13, 1994, which claims priority
under 35 U.S.C. §§ 119(a) and 365(b) based on United Kingdom Application
9325508.1, filed December 14, 1993.
Claim 40 was canceled and claims 42 and 52 were amended in the2
amendment after final filed June 12, 1998 with the appeal brief.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 14
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte HARRY S. MAY
____________
Appeal No. 99-0622
Application No. 08/637,7171
____________
ON BRIEF
____________
Before ABRAMS, NASE, and BAHR, Administrative Patent Judges.
BAHR, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 25 through 39 and 41 through 55, which are
all of the claims pending in this application. The examiner2
Appeal No. 99-0622 Page 2
Application No. 08/637,717
We interpret the examiner's reference to the 35 U.S.C. § 112, second3
paragraph, rejection on page 4 of the answer merely as notice that, in view of
the latitude the examiner has afforded the appellant in defining
"intermediate" in claim 31 by withdrawing the 35 U.S.C. § 112 rejection, the
term "intermediate" is read by the examiner with similar breadth in assessing
the claims in view of the prior art. It is not interpreted as a statement of
intent to maintain the 35 U.S.C. § 112 rejection.
withdrew the rejections of claims 31 through 35 and 42 through
55 under 35 U.S.C. § 112, second paragraph , claims 48 and 513
under 35 U.S.C. § 102(b) and claims 32 through 35, 38, 49, 53
and 55 under 35 U.S.C. § 103 in the answer (see top of page
4). Accordingly, the claims involved in this appeal are
claims 25 through 31, 36, 37, 39, 41 through 47, 50, 52 and
54. We note that the examiner's addition of a new ground of
rejection of claim 44 under 35 U.S.C. § 102 as being
anticipated by Leach in the answer (page 3) was not in
compliance with 37 CFR § 1.193(a)(2)(added effective Dec. 1,
1997, by final rule notice, 62 Fed. Reg. 53131, 53197 (Oct.
10, 1997), 1203 Off. Gaz. Pat. & Trademark Office 63, 121
(Oct. 21, 1997)). Our treatment of the rejection infra,
however, ensures that the appellant suffers no prejudice from
the inclusion of this new ground of rejection.
We REVERSE and enter a new ground of rejection pursuant
to the provisions of 37 CFR § 1.196(b).
Appeal No. 99-0622 Page 3
Application No. 08/637,717
The copy of claim 52 in the appendix to appellant's brief contains two4
minor errors relative to claim 52 as amended in Paper No. 11. Specifically,
the phrase "adapted to be" has inadvertently been inserted in line 9 instead
of line 12.
BACKGROUND
The appellant's invention relates to a fall arrest
apparatus to be worn by workers at risk of falling from a
structure such as a tree, pole or building. The apparatus
utilizes support straps having connections to a harness or
belt worn by the user which rupture upon application of a
force exceeding a threshold level to sever any connections
between the strap and locations on the harness or belt
disposed at or below the waist of the worker. An
understanding of the invention can be derived from a reading
of exemplary claims 25, 42 and 52, which appear in the
appendix to the appellant's brief.4
The prior art references of record relied upon by the
examiner in rejecting the appealed claims are:
Dalmaso 4,253,544 Mar. 3, 1981
Leach 5,325,818 Jul. 5, 1994
(filed Aug. 4, 1993)
Brda 3,604,973 Aug. 20, 1987
Appeal No. 99-0622 Page 4
Application No. 08/637,717
An English language translation of this reference, prepared by the5
Patent and Trademark Office, is appended hereto.
We note that the filing date of this application is December 13, 1994,6
its international filing date, under 35 U.S.C. § 363. Accordingly, the Leach
patent, which was not patented until July 5, 1994, is not available as prior
art to this application under 35 U.S.C. § 102(b). It is, however, available
as prior art under 35 U.S.C. § 102(e). Our treatment of this rejection in the
opinion section below will, thus, focus on whether Leach anticipates the
claims.
(German Patent document)5
The following rejections are before us for review.
1. Claims 42, 44 through 47 and 50 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Leach.6
2. Claim 52 stands rejected under 35 U.S.C. § 103 as being
unpatentable over Leach.
3. Claims 43 and 54 stand rejected under 35 U.S.C. § 103 as
being unpatentable over Leach in view of Dalmaso.
4. Claims 25 through 27, 30, 31, 36, 37 and 39 stand
rejected under 35 U.S.C. § 103 as being unpatentable over
Leach in view of Brda.
5. Claims 28, 29 and 41 stand rejected under 35 U.S.C. § 103
as being unpatentable over Leach in view of Brda, as applied
above, and further in view of Dalmaso.
Appeal No. 99-0622 Page 5
Application No. 08/637,717
The complete text of the examiner's rejections and
response to the argument presented by the appellant appears in
the answer (Paper No. 13, mailed September 14, 1998), while
the complete statement of the appellant's argument can be
found in the brief (Paper No. 11 ½, filed June 12, 1998).
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims, to the applied prior art references, and to the
respective positions articulated by the appellant and the
examiner. As a consequence of our review, we make the
determinations which follow.
We shall not sustain the examiner's rejection of claims
42, 44 through 47 and 50 under 35 U.S.C. § 102(b) as
anticipated by Leach.
Anticipation is established only when a single prior art
reference discloses, expressly or under the principles of
inherency, each and every element of a claimed invention. RCA
Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444,
Appeal No. 99-0622 Page 6
Application No. 08/637,717
221 USPQ 385, 388 (Fed. Cir.), cert dismissed, 468 U.S. 1228
(1984).
The examiner asserts that Leach discloses all positively
claimed elements, including "a harness, an anchorage point
(36), a connection point (16,18), a connector (42,26,20)"
(answer, page 4). We agree with the appellant's argument that
the connecting strap 20 cannot be interpreted as both an
essential part of the harness and a connector recited in
addition to the harness (brief, page 6).
The connecting strap (20) of Leach is required, in
combination with the waistband (12) and shoulder straps (22,
24), to form a harness "sized and configured to be secured
about a person's body" in the manner set forth in claim 42.
The connecting strap (20), as a necessary part of the recited
harness, cannot also be interpreted, for purposes of
anticipation, as any of the portions of the connector, which
are recited in claim 42 as elements in addition to the
harness. See In re Robertson, 169 F.3d 743, 745, 49 USPQ2d
1949, 1950-51 (Fed. Cir. 1999).
Appeal No. 99-0622 Page 7
Application No. 08/637,717
Furthermore, we note for the record that we agree with the appellant's7
argument that there is no teaching to combine Leach and Dalmaso as proposed by
the examiner (brief, page 8). The energy absorbing lanyard of Dalmaso is
disclosed for checking the fall of a worker (column 1, lines 11 through 16).
The worker is decelerated gradually rather than being jerked to an abrupt halt
(column 1, lines 16 through 35). As the harness of Leach is not disclosed for
use in checking a person's fall, it is not apparent why one of ordinary skill
in the art would have been led to add an energy absorbing unit on the Leach
device.
While Leach does disclose a tether strap (42) adapted to
be secured to a support structure and a fastening strap (26)
secured to the buckle rod (36), Leach does not disclose any
additional element responding to the recited second portion of
the connector.
For the reasons discussed above, we cannot sustain the
examiner's rejection of independent claim 42, or claims 44
through 47 and 50 which depend therefrom, under 35 U.S.C. §
102(b).
Turning now to the rejection of claim 43 under 35 U.S.C.
§ 103 as being unpatentable over Leach in view of Dalmaso, we
have reviewed the teachings of Dalmaso, but find nothing
therein to overcome the deficiencies of Leach discussed
above. It follows then that we must also reverse the7
standing rejection of claim 43, which depends from claim 42,
under 35 U.S.C. § 103.
Appeal No. 99-0622 Page 8
Application No. 08/637,717
We shall not sustain the rejection of claim 52 under 35
U.S.C. § 103 as being unpatentable over Leach.
Claim 52 recites that the first and second connectors be
interconnected to form junctures which will withstand forces
in excess of approximately 2.5 kN and that the forward and
rearward segments of the belt be interconnected to form a
juncture which will rupture when subjected to a force in
excess of approximately 2.5 kN. Leach does not disclose the
capacity of any of the junctures or connection points of the
restraining device. The examiner submits that "[t]o form the
juncture to withstand a force as desired, would have been an
obvious mechanical expedient" (answer, page 3) and "[t]o
substitute other conventional releasable fastener [sic], e.g.,
buttons, buckles, etc., which will withstand forces as desired
is within the scope of one of ordinary skill in the art"
(answer, page 4).
We note, however, that rejections based on 35 U.S.C. §
103 must rest on a factual basis. In making such a rejection,
the examiner has the initial duty of supplying the requisite
factual basis and may not, because of doubts that the
invention is patentable, resort to speculation, unfounded
Appeal No. 99-0622 Page 9
Application No. 08/637,717
assumptions or hindsight reconstruction to supply deficiencies
in the factual basis. In re Warner, 379 F.2d 1011, 1017, 154
USPQ 173, 177-78 (CCPA 1967). Moreover, the mere fact that
the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. See In re Mills, 916 F.2d
680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990); In re Gordon,
733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
The device of Leach is intended for use in restraining a
small child, either in an ambulatory state or seated in a
grocery cart or chair (column 1, lines 7 through 13). As the
device would not be expected to be subjected to forces even
approaching 2.5 kN in either of these applications, it is not
apparent to us why one of ordinary skill in the art would have
been led to provide connections, such as the stitches (41) or
the buckle (30), to withstand forces in excess of
approximately 2.5 kN.
Appeal No. 99-0622 Page 10
Application No. 08/637,717
Therefore, we cannot sustain the standing rejection of
claim 52 under 35 U.S.C. § 103 as being unpatentable over
Leach.
With regard to the rejection of claim 54 under 35 U.S.C.
§ 103 as being unpatentable over Leach in view of Dalmaso, we
have reviewed the teachings of Dalmaso, but we find nothing
therein which overcomes the deficiencies of Leach discussed
above with regard to claim 52. It follows then that we cannot
sustain the standing rejection of claim 54, which depends from
claim 52, under 35 U.S.C. § 103.
Turning now to the rejection of claims 25 through 27, 30,
31, 36, 37 and 39 under 35 U.S.C. § 103 as being unpatentable
over Leach in view of Brda, claim 25 reads as follows:
25. A safety harness, comprising:
left and right leg loops;
left and right shoulder straps; and
a connecting means for connecting the harness to
a support structure in such a manner that at least
one relatively weaker juncture disposed between the
support structure and the harness will rupture when
subjected to a force in excess of a threshold
amount, and at least one relatively stronger
juncture disposed between the support structure and
the harness will remain secure when subjected to a
force in excess of the threshold amount . . .
Appeal No. 99-0622 Page 11
Application No. 08/637,717
We note that the "connecting means" is recited as part of the
safety harness.
The examiner has identified the rear or free end (18) as
the "relatively weaker juncture," the box stitch (41) or
buckle rod (36) as the "relatively stronger juncture" and the
tether strap (42) and strip (40) as at least part of the
"connecting means" (answer, page 5). Since the "connecting
means" is defined in claim 25 as part of the safety harness,
as opposed to additional structure in combination with the
safety harness, the tether strap (42) and strip (40) must be
considered part of the harness when reading the claim on the
Leach device. Consequently, the junctures (18) and (41) or
(36) must be viewed, for comparison with the claimed
invention, as being disposed between parts of the harness
(e.g., between waistband 12 and shoulder straps 22,24 and
between strip 40 and tether strap 42 or shoulder straps 22,24,
respectively) and not between the support structure and the
harness as required by claim 25. We find only one juncture
disposed between a support structure and the harness as
Appeal No. 99-0622 Page 12
Application No. 08/637,717
As the thigh straps of Brda are designed to support the user in a8
suspended state during rappelling (see Figure 3) and as the Leach harness is
not disclosed for use in supporting a child in a suspended state, it is not
immediately apparent to us why Brda would have suggested to one of ordinary
skill in the art the addition of leg straps to a child restraint of the type
disclosed by Leach. However, as the appellant has not challenged the
examiner's position on this issue and as it would not alter our ultimate
disposition of this appeal, we shall accept the examiner's position on this
issue.
defined in the claim. This juncture is disposed between the
tether strap (42) of the harness and the support structure.
Accordingly, even if the teachings of Leach and Brda were
combined as proposed by the examiner to provide leg straps or
loops on the Leach safety harness , the resulting device would8
still not render the safety harness recited in claim 25
obvious.
For the reasons discussed above, we are constrained to
reverse the standing rejection of claim 25, and of claims 26,
27, 30, 31, 36, 37 and 39 which depend therefrom, under 35
U.S.C. § 103 as being unpatentable over Leach in view of Brda.
We have reviewed the teachings of Dalmaso, but we find
nothing therein which overcomes the deficiencies of the Leach
and Brda combination as discussed above with regard to claim
25. It follows then that we must also reverse the examiner's
rejection of claims 28, 29 and 41, which depend from claim 25,
Appeal No. 99-0622 Page 13
Application No. 08/637,717
under 35 U.S.C. § 103 as being unpatentable over Leach in view
of Brda and Dalmaso.
NEW GROUND OF REJECTION UNDER 37 CFR § 1.196(b)
Under the provisions of 37 CFR § 1.196(b), we make the
following new ground of rejection.
Claims 25 through 39 and 41 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention.
In defining the "connecting means" as part of the safety
harness and further requiring that the "relatively weaker
juncture" and "relatively stronger juncture" be disposed
between a support structure and the harness, claim 25 is
misdescriptive of or inconsistent with the appellant's
disclosed invention. Cf. In re Cohn, 438 F.2d 989, 993, 169
USPQ 95, 98 (CCPA 1971). Specifically, the record as a whole
indicates that the "connecting means" of claim 25 corresponds
to the transfer straps (20, 28) and the positioning strap (22)
of the appellant's disclosure. If these straps are considered
part of the safety harness, as recited in claim 25, the only
Appeal No. 99-0622 Page 14
Application No. 08/637,717
juncture between a support structure (a building or pole) and
the harness is between the positioning strap and the support
structure and this juncture is not disclosed as being
rupturable when subjected to a force in excess of the
disclosed threshold. The disclosed weaker/rupturable juncture
is at connection (16,18), which is disposed between the belt
portion of the harness and the "connecting means" portion of
the harness, not between the support structure and the
harness.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 42, 44 through 47 and 50 under 35 U.S.C. § 102(b) and
claims 25 through 31, 36, 37, 39, 41, 43, 52 and 54 under 35
U.S.C. § 103 is reversed and a new rejection of claims 25
through 39 and 41 is added pursuant to the provisions of 37
CFR 1.196(b).
This decision contains a new ground of rejection pursuant
to 37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final
rule notice, 62 Fed. Reg. 53131, 53197 (Oct. 10, 1997), 1203
Off. Gaz. Pat. Office 63, 122 (Oct. 21, 1997)). 37 CFR §
Appeal No. 99-0622 Page 15
Application No. 08/637,717
1.196(b) provides that, "A new ground of rejection shall not
be considered final for purposes of judicial review."
37 CFR § 1.196(b) also provides that the appellant,
WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise
one of the following two options with respect to the new
ground of rejection to avoid termination of proceedings
(§ 1.197(c)) as to the rejected claims:
(1) Submit an appropriate amendment of the
claims so rejected or a showing of facts relating to
the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard
under § 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
Appeal No. 99-0622 Page 16
Application No. 08/637,717
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED; 37 CFR § 1.196(b)
NEAL E. ABRAMS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JEFFREY V. NASE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 99-0622 Page 17
Application No. 08/637,717

APPEAL NO. 99-0622 - JUDGE BAHR
APPLICATION NO. 08/637,717
APJ BAHR
APJ ABRAMS
APJ NASE
DECISION: REVERSED;
37 CFR § 1.196(b)
Prepared By: Carolyn Whitfield
DRAFT TYPED: 13 Apr 00
FINAL TYPED: