Ex Parte Valenti

Patent Trial and Appeal Board

Feb 7, 2017

13764993 (P.T.A.B. Feb. 7, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O.Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
13/764,993 02/12/2013 Joseph J. Valenti VALJl 1A 3010
41681 7590
Richard L. Miller
12 Parkside Drive
Dix Hills, NY 11746-4879
EXAMINER
WAY, JAMES R
ART UNIT PAPER NUMBER
3788
MAIL DATE DELIVERY MODE
02/07/2017 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOSEPH J. VALENTI
Appeal 2015-004314
Application 13/764,993
Technology Center 3700
Before LYNNE H. BROWNE, NATHAN A. ENGELS, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Joseph J. Valenti (Appellant) appeals under 35 U.S.C. § 134 from the
rejection of claims 1—31. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal 2015-004314
Application 13/764,993
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. A tray for removably receiving an open A-frame ladder
having a pail rest, a head step, side rails, and a pair of spreaders,
for being rigid and non-pivotable, for being free of the pail rest
of the open A-frame ladder, for being free of the head step of the
open A-frame ladder, and for not requiring holes in the side rails
of the open A-frame ladder to attach to, said tray comprising:
a) an open portion; and
b) a closed portion;
wherein said open portion extends rigidly from said closed
portion;
wherein said open portion is for removably receiving the
open A-frame ladder and rests between the pail rest of the open
A-frame ladder and the head step of the open A-frame ladder
when said tray is in use so as to allow said open portion and said
closed portion to be free of the pail rest of the open A-frame
ladder and the head step of the open A-frame ladder when said
tray is in use;
wherein said open portion is for non-pivotally receiving
the open A-frame ladder when said tray is in use;
wherein said open portion is for not requiring holes in the
side rails of the open A-frame ladder to attach to when said tray
is in use;
wherein said open portion is defined by a pair of side
walls;
wherein said closed portion comprises a pair of side walls;
and
wherein said pair of side walls defining said open portion
are collinear with said pair of side walls of said closed portion,
respectively.
2
Appeal 2015-004314
Application 13/764,993
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Craig US 2004/0163891 A1 Aug. 26,2004
Morfidis US 2012/0103726 A1 May 3, 2012
REJECTIONS
I. Claims 1—11 and 15—25 stand rejected under 35 U.S.C. § 102(b)
as anticipated Craig.
II. Claims 12—14 and 26—31 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Craig and Morfidis.
DISCUSSION
As an initial matter, we note that prior rejections of the claims
involved in this Appeal are moot as this Appeal is taken from the Final
Action. See 37 C.F.R. § 41.31. Accordingly, we do not consider
Appellant’s arguments pertaining to rejections that are not currently
pending.
Rejection I
Claims 1—5, 7—11, 17—20, and 23—25
Appellant argues claims 1—5, 7—11, 17—20, and 23—25 together.1 See
Appeal Br. 22. We select independent claim 1 as the representative claim,
and claims 2—5, 7—11, 17—20, and 23—25 stand or fall with claim 1.
1 Although, claims 6, 15, 16, 21, and 22 are included in this group, Appellant
provides separate arguments pertaining to the patentability of these claims.
Appeal Br. 18—20. Accordingly, we do not include claims 6, 15, 16, 21, and
22 in this group.
3
Appeal 2015-004314
Application 13/764,993
The Examiner finds that Craig discloses each and every limitation of
claim 1. See Final Act. 3. The Examiner sets forth alternative rejections
based on Craig. In particular, the Examiner finds that Craig discloses an
open portion “wherein the open portion is defined by a pair of sidewalls (10
or 9).” Id. The Examiner further finds that Craig discloses a closed portion
comprising “a pair of sidewalls (26 or 9); and wherein the pair of sidewalls
defining the open portion are co-linear with said pair of sidewalls of said
closed portion.” Id. (citing Craig Figs. 1—3). Accordingly, we understand
the Examiner to set forth a first rejection wherein the side walls of the open
portion correspond to Craig’s side rails 10 and the side wall of the closed
portion correspond to Craig’s intermediate rails 26 and a second rejection
wherein the side walls of both the closed and open portions correspond to
Craig’s side rails 9.
Appellant reminds us that claims must be interpreted in light of the
Specification. See Appeal Br. 16. With this admonishment in mind,
Appellant contends that:
it is Appellant Valenti’s intention to define the outside boundary
of the tray by the pair of side walls of the open position and the
collinear pair of side walls of the closed portion, respectively,
and that there is no additional structure disposed outside the pair
of side walls of the open position and the collinear pair of side
walls of the closed portion, and that the pair of side walls of the
open position define the lateral expanse of the open portion and
that the collinear pair of side walls of the closed portion define
the lateral expanse of the closed portion.
Appeal Br. 17 (emphasis omitted). However, claim 1 does not define the
“outside boundary” of the tray nor otherwise preclude additional structure.
See Appeal Br. 24. Furthermore, reading a claim in light of the
specification, to thereby interpret limitations explicitly recited in the claim,
4
Appeal 2015-004314
Application 13/764,993
is a quite different thing from reading limitations of the specification into a
claim, to thereby narrow the scope of the claim by implicitly adding
disclosed limitations which have no express basis in the claim. In re Prater,
415 F.2d 1393, 1404—05 (CCPA 1969). Although the claims are interpreted
in light of the specification, limitations from the specification are not read
into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993).
Accordingly, we do not construe claim 1 to preclude additional structure
“disposed outside the pair of side walls of the open position and the collinear
pair of side walls of the closed portion.”
Appellant further argues that “Appellant Valenti solves the problem of
lateral stability of an open A-frame ladder having a tray thereon by not
having the tray extend laterally from the open A-frame ladder to which it is
attached to maintain the footprint of the open A-frame ladder per se.”
Appeal Br. 17 (emphasis omitted). However, the problem solved by the
invention is not germane to a rejection based on anticipation. Rather, a
claim is anticipated if each and every element as set forth in the claim is
found, either expressly or inherently described, in a single prior art
reference. Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987).2 Appellant fails to identify any limitation which is not
found in Craig. Thus, Appellant does not apprise us of error.
In addition, Appellant argues that the “interpretation of claim 1 of the
present invention is in conflict with claim 21 of the present invention, which
2 We note that the comments quoted from CVI/Beta Ventures, Inc. v. Tura
LP, 112 F.3d 1146 (Fed. Cir. 1997) in support of Appellant’s argument
(Appeal Br. 17) pertain to claim construction during litigation, not
prosecution; and thus, are not pertinent to this Appeal. We further note that
the quote from//? re Dillon, 919 F.2d 688 (Fed. Cir. 1990) (id.) pertains to a
rejection based on obviousness, not anticipation; and thus, is also inapposite.
5
Appeal 2015-004314
Application 13/764,993
ultimately depends from claim 1.” Appeal Br. 17—18. Appellant’s argument
is misplaced. By definition, an independent claim is broader than its
dependent claims, and limitations of a dependent claim are not imputed to
the independent claim from which it depends. Accordingly, Appellant does
not apprise us of error.
For these reasons, we sustain the Examiner’s decision rejecting claim
1, and claims 2—5, 7—11, 17—20, and 23—25, which fall therewith.
Claim 6
Appellant contends that Craig fails to disclose a pair of side walls of
the open portion that are for acting like an additional pair of spreaders for
the open A-frame ladder as required by claim 6. See Appeal Br. 19. In
support of this contention, Appellant notes that Craig’s side walls 9 are
spaced from and, thereby, do not touch the side rails of the open A-frame
ladder. See id. Appellant argues that “as such, the pair of sidewalls 9 of
Craig et al. cannot act as an additional pair of spreaders for the open
A-frame ladder, as required by claim 6 of the present invention.” Id.
(emphasis omitted).
Responding to this argument, the Examiner finds that “the sidewalls 9
are in direct connection to the sidewalls 10, [and thus,] direct support is
given to the structure [such that sidewalls 9] would act as an additional pair
of spreaders.” Ans. 3^4. Appellant does not contest this finding or explain
why side walls 9 would not act as an additional pair of spreaders. Moreover,
we note that in accordance with the first alternative rejection, Craig’s side
rails 10 correspond to the claimed side walls of the open portion, and
Appellant also does not rebut the Examiner’s findings that Craig’s side rails
10 meet the limitation at issue.
6
Appeal 2015-004314
Application 13/764,993
For these reasons, we sustain the Examiner’s decision rejecting claim
6.
Claim 15
Appellant contends that Craig fails to disclose that the pair of side
walls of the open portion are vertically oriented and that they “rest snugly
against each side pair of side rails of the open A-frame ladder.” Appeal Br.
19 (emphasis omitted). In support of this contention, Appellant argues that:
if the pair of sidewalls 9 of Craig et al. are the pair of sidewalls
for both the open and the closed portions of the present invention,
. . . then the pair of sidewalls 9 of Craig et al. would be spaced
from the side rails of the open A-frame ladder, and as such, . . .
cannot rest snugly against the sides of the open A-frame ladder.
Id. at 20 (emphasis omitted).
Appellant’s argument is not responsive to the rejection as articulated
by the Examiner which identifies Craig’s side rails 9 or 10 as corresponding
to the claimed pair of side walls of the open portion. See Final Act. 3
(emphasis added). Appellant does not rebut the Examiner’s finding that
Craig’s side walls 10 rest snugly against the side rails of the ladder. Thus,
Appellant does not apprise us of error.
We sustain the Examiner’s decision rejecting claim 15.
Claim 16
Appellant contends that “if the pair of sidewalls 9 of Craig et al. are
the pair of sidewalls for both the open and the closed portions of the present
invention,. . . then the closed portion of Craig et al. will be generally U-
shaped and not generally rectangular-shaped, as required by claim 16 of the
present invention.” Appeal Br. 20. However, as discussed supra, the
rejection also identifies Craig’s side walls 26 as corresponding to the side
walls for the closed portion. In this alternative, the closed portion is
7
Appeal 2015-004314
Application 13/764,993
generally rectangular-shaped. See Craig Fig. 3. Thus, Appellant does not
apprise us of error.
We sustain the Examiner’s decision rejecting claim 16.
Claim 21
Appellant contends that Craig fails to disclose side walls of the closed
portion that are one-piece with the pair of side walls of the open portion.
See Appeal Br. 18.
Responding to this argument, the Examiner explains that:
The alternative view of Craig is also best viewed in Figure
3 where item 9 marks the sidewalls of both the open and closed
portions. This interpretation of the invention of Craig meets both
the limitations of Claim 1 and the deficiency that is [alleged] in
regards to Claim 21.
Ans. 3. We note that claims 1 and 21 do not require that the side walls of
the open portion be the side walls of the opening itself. See Appeal Br. 24,
27. Given the breadth of the claim limitation at issue, we agree with the
Examiner that Craig’s side rails 9 meet the limitation requiring a pair of side
walls that define the open portion (see claim 1) and the limitation requiring
that the sides wall of the open portion and the side walls of the closed
portion be one-piece (see claim 21) as most clearly shown in Craig’s Figure
3.
We sustain the Examiner’s decision rejecting claim 21.
Claim 22
Appellant contends that Craig fails to disclose a front wall of the open
portion that “becomes a partition by dividing said tray into said open portion
and said closed portion.” Appeal Br. 20 (emphasis omitted). In support of
this contention, Appellant argues that
8
Appeal 2015-004314
Application 13/764,993
if the pair of sidewalls 9 of Craig et al. are the pair of sidewalls
for both the open and the closed portions of the present invention,
. . . then the front wall of the open portion of Craig et al. would
not extend from one sidewall 9 of Craig et al. to the other
sidewall 9 of Craig et al.
Appeal Br. 20 (emphasis omitted).
The Examiner finds that Craig discloses a front wall 6. See Final Act.
3. Appellant does not contest this finding. As shown in Craig’s Figure 3,
Craig’s wall 6 is a partition that divides Craig’s tray into an open portion and
a closed portion. Thus, Appellant does not apprise us of error.
We sustain the Examiner’s decision rejecting claim 22.
Rejection II
Claims 12-14 and 28-31
Appellant argues claims 12—14 and 28—31 together. See Appeal Br.
22—23.3 Appellant contends that the “grounds for the rejection of claims 12—
14 and 26—31 under 35 U.S.C.§ 103(a) as being unpatentable under Craig et
al. in view of Morfidis et al. are no longer applicable.” Appeal Br. 23
(emphasis omitted). Based on this contention, Appellant requests that the
Board reverse the rejection of these claims. See id.
It appears that Appellant is arguing that for the reasons discussed with
respect to independent claim 1, claims 12—14 and 28—31, which depend
therefrom, are also allowable. However, as discussed supra, Appellant’s
arguments are unconvincing. As Appellant provides no other arguments
pertaining to the patentability of claims 12—14 and 28—31, we sustain the
Examiner’s decision rejecting claims 12—14 and 28—31.
3 Appellant includes claims 26 and 27 in this group. Appeal Br. 22—23.
However, Appellant argues claims 26 and 27 separately (albeit in the section
of the Appeal Brief pertaining to the first ground of rejection). See Appeal
Br. 20-21. Accordingly, we do not include claims 26 and 27 in this group.
9
Appeal 2015-004314
Application 13/764,993
Claim 26
Appellant contends that Craig fails to disclose a lower edge of each
side wall of the closed portion extending forwardly and upwardly from the
front wall of the open portion. See Appeal Br. 20. In support of this
contention, Appellant argues that
if the pair of sidewalls 9 of Craig et al. are the pair of sidewalls
for both the open and the closed portions of the present invention,
. . . then the pair of sidewalls 9 of Craig et al. would be spaced
from the front wall of the closed portion of Craig et al., and as
such, the pair of sidewalls 9 of Craig et al. cannot extend from
the front wall of the closed portion of Craig et al., as required by
claim 26 of the present invention.
Id. at 20-21 (emphasis omitted).
Appellant’s argument is not responsive to the rejection as articulated
by the Examiner which equates Craig’s side rails 10 with the claimed open
portion side walls and Craig’s interior rails 26 with the claimed closed
portion side walls. Craig’s side rails 10 extend from the front wall 6 as
shown in Craig’s Figure 3. Thus, Appellant does not apprise us of error.
We sustain the Examiner’s decision rejecting claim 26.
Claim 27
Arguing claim 27, Appellant essentially repeats the same argument
contesting the rejection of claim 26. This argument does not apprise us of
error for the reasons discussed supra.
We sustain the Examiner’s decision rejecting claim 27.
10
Appeal 2015-004314
Application 13/764,993
DECISION
The Examiner’s rejections of claims 1—31 are 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)(l)(iv).
AFFIRMED
11