Ex Parte Summers

Board of Patent Appeals and Interferences

Aug 4, 2004

10083915 (B.P.A.I. Aug. 4, 2004)

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publication and is not binding precedent of the Board.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. 17
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte WILLIAM THOMAS SUMMERS
____________
Appeal No. 2004-1635
Application No. 10/083,915
____________
ON BRIEF
____________
Before OWENS, KRATZ and TIMM, Administrative Patent Judges.
KRATZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the examiner's final
rejection of claims 1-3, which are all of the claims pending in
this application.
BACKGROUND
Appellant's invention relates to a step for climbing. An
understanding of the invention can be derived from a reading of
exemplary claim 1, which is reproduced below.
Appeal No. 2004-1635
Application No. 10/083,915
Page 2
1. A step for climbing, comprising:
a screw;
a substantially straight lever with first and
second opposing bends, said first bend connected at
substantially a right angel to the screw;
and a loop connected to the second bend of the
lever, at an angle substantially parallel to the screw,
said step being sufficient to perform as a tree step,
handhold, or lanyard clip.
The sole prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Wright 2,060,711 Nov. 10, 1936
Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Wright.
We refer to the briefs and to the answer for a complete
exposition of the opposing viewpoints expressed by appellant and
the examiner concerning the issues before us on this appeal.
OPINION
Having carefully considered each of appellant’s arguments
set forth in the brief and reply brief, appellant has not
persuaded us of reversible error on the part of the examiner.
Accordingly, we will affirm the examiner’s rejection for
substantially the reasons set forth by the examiner in the
answer. We add the following for emphasis.
Appeal No. 2004-1635
Application No. 10/083,915
Page 3
At the outset, we note that the examiner (answer, Page 2)
has correctly noted that appellant brings this appeal on the
basis that all of the claims stand or fall together as indicated
at page 2 of the brief. Appellant has not disagreed with this
assessment of the examiner or with the examiner’s selection of
claim 1 as representative of the appealed claims in their reply
brief. Consequently, we limit our discussion to appealed
claim 1.
A prior art reference anticipates the subject matter of a
claim when the reference discloses every feature of the claimed
invention, either explicitly or inherently (see Hazani v. Int'l
Trade Comm'n, 126 F.3d 1473, 1477, 44 USPQ2d 1358, 1361 (Fed.
Cir. 1997) and RCA Corp. v. Applied Digital Data Sys., Inc.,
730 F.2d 1440, 1444, 221 USPQ 385, 388 (Fed. Cir. 1984));
however, the law of anticipation does not require that the
reference teach what the appellants are claiming, but only that
the claims on appeal "read on" something disclosed in the
reference (see Kalman v. Kimberly-Clark Corp., 713 F.2d 760, 772,
218 USPQ 781, 789 (Fed. Cir. 1983).
Anticipation is a factual determination. See In re Baxter
Travenol Labs., 952 F.2d 388, 390, 21 USPQ2d 1281, 1283 (Fed.
Cir. 1991) (citing In re Bond, 910 F.2d 831, 833, 15 USPQ2d 1566,
Appeal No. 2004-1635
Application No. 10/083,915
Page 4
1567 (Fed. Cir. 1990). In the case before us, we agree with the
examiner that Wright discloses, either expressly or inherently,
every limitation of representative claim 1. Concerning this
matter, we observe that Wright discloses a device including a
screw, such as screw (5, figures 1 and 2), a substantially
straight lever (4, figures 1 and 2) with first and second
substantially right angle bends and a loop connected to the
second bend as shown in the drawing figures of Wright.
Appellant does not dispute the examiner’s determination that
Wright discloses a device corresponding to the claim 1 device but
for the alleged functional requirement that the claimed device is
a “step for climbing” that is “sufficient to perform as a tree
step, handhold, or lanyard clip” (Claim 1).
Appellant argues (brief, page 9) that the claim 1 step for
climbing limitation requires a structural limitation, “such as
resistance to structural collapse under weight” (reply brief,
page 3) that is not found in the prior art. Appellant further
maintains that the “sufficient to perform limitation” of claim 1
further specifies the functional limitation and restricts the
claimed step structure in a way to differentiate over the applied
prior art. This is so, according to appellant, because the
device of Wright is disclosed for use as a hat hanger and is made
Appeal No. 2004-1635
Application No. 10/083,915
Page 5
of materials (shapable wire) that would not be capable of
performing as the claimed climbing step. Consequently, appellant
maintains that the Wright device must be structurally different
from the here claimed subject matter.
In determining the patentability of claims, the PTO gives
claim language its “broadest reasonable interpretation”
consistent with the specification and claims. In re Morris, 127
F.3d 1048, 1054, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997) (citations
omitted). Even after a patent issues, a claim term takes on its
ordinary and accustomed meaning unless the patentee demonstrates
an intent to deviate from that meaning by redefining the term in
the intrinsic record using words of “manifest exclusion or
restriction.” Teleflex Inc. v. Ficosa North America Corp., 299
F.3d 1313, 1325, 63 USPQ2d 1374, 1380 (Fed. Cir. 2002).
Having reviewed the specification and claims, we determine
that appellant furnished no special definition for the recited
term “step for climbing” or “step” that would limit those terms
to requiring that the claimed device must be constructed in a
special way to support a particular size person as a climber in a
position well above ground level. In this regard, we note that
appellant has not furnished a special definition for the term
step in their specification that would suggest a structure that
Appeal No. 2004-1635
Application No. 10/083,915
Page 6
1 See Webster’s II New Riverside University Dictionary
(1984), page 1136. Also, see page 8 of the reply brief.
differs from the structure taught by Wright. Absent such a
special definition, we interpret the claimed step for climbing as
requiring structure as recited in claim 1 which is useful as a
rest for a “foot in ascending or descending”1.
Consequently, even though we agree with appellant that the
claim preamble and “sufficient to perform . . .” functional
language must be given some weight in determining the scope of
the claims, we do not find in that claim language a requirement
that the step is constructed to support the full weight of a
particularly sized person, such as the person schematically
depicted in drawing figure 7, while the step is located a
significant distance off the ground as illustrated in drawing
figure 7. In this regard, appellant has not established that the
hanger of Wright would not be capable of serving as a step for
resting the foot of a creature such as a bird or squirrel that is
in the process of climbing. Nor do the appealed claims exclude
such. Moreover, the loop portion of the representative claim 1
step is open to being in a position resting on the ground or some
other surface for a person to step onto. Thus appellant’s
arguments and the declaration of Mr. Schlais with respect to 50
Appeal No. 2004-1635
Application No. 10/083,915
Page 7
pounds being the minimum safe weight for a person being trained
to use climbing equipment is not persuasive. See In re Self, 671
F.2d 1344, 1350-1351, 213 USPQ 1, 7 (CCPA 1982) (when the claim
does not recite allegedly distinguishable features, “appellant[s]
cannot rely on them to establish patentability.”).
Moreover, the testing of a device made from a wire coat
hanger as reported in the declaration of Mr. Schlais has not been
shown to be germane to the device disclosed by Wright because
Wright teaches using braced wire, very stiff wire, or multi-
stranded wire and the coat hanger employed by Mr. Schlais has not
been established as being comparable let alone equivalent to the
device taught by Wright.
In sum, appellant has not furnished a special definition in
their specification for the functional claim terms at issue that
would require a structure that differs from the device taught by
Wright. Nor has appellant otherwise established via the
declaration evidence submitted with the brief how the parts
differ structurally. Consequently, we are not persuaded of
reversible error in the examiner’s rejection on this record.
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Application No. 10/083,915
Page 8
CONCLUSION
The decision of the examiner to reject claims 1-3 under
35 U.S.C. § 102(b) as being anticipated by Wright is affirmed.
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
TERRY J. OWENS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
PETER F. KRATZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CATHERINE TIMM )
Administrative Patent Judge )
PFK/sld
Appeal No. 2004-1635
Application No. 10/083,915
Page 9
WILLIAM THOMAS SUMMERS
W323 N 8028 NORTH CREST DRIVE
HARTLAND, WI 53029