Ex parte Verenski

Board of Patent Appeals and Interferences

Dec 3, 1999

08592109 (B.P.A.I. Dec. 3, 1999)

Application for patent filed January 26, 1996. 1
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for publication in a law journal and (2) is not binding precedent of the Board.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. 12
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte DOUGLAS R. VERENSKI
____________
Appeal No. 1999-0639
Application No. 08/592,1091
____________
ON BRIEF
____________
Before COHEN, McQUADE, 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 1 through 13, which are all of the claims
pending in this application.
We REVERSE.
Appeal No. 1999-0639 Page 2
Application No. 08/592,109
BACKGROUND
The appellant's invention relates to a ladder system, a
ladder rail, a method of climbing the ladder and a method of
forming the ladder. Of importance to the appellant is the
provision of a non-linear (curved) slot in the ladder rail of
the invention for pivotal attachment of a ladder shoe. An
understanding of the invention can be derived from independent
claims 1, 10, 11 and 13, which are reproduced in the appendix
to the appellant's brief.
The prior art reference of record relied upon by the
examiner in rejecting the appealed claims is:
Kiska 5,370,203 Dec. 6, 1994
The following rejections are before us for review.
Claims 1 through 13 stand rejected under 35 U.S.C. § 103
as being unpatentable over Kiska.
Reference is made to the brief (Paper No. 9) and the
answer (Paper No. 10) for the respective positions of the
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Application No. 08/592,109
In reviewing claim 10, we note that the body of the claim, which2
recites a bolt extending through the non-linear rail slot of the web portion
of the rail, does not appear to be commensurate in scope with the preamble of
the claim, which recites only a ladder rail and not a ladder rail in
combination with a bolt. Further, "its flange section" in claim 13, lines 2
and 3, lacks antecedent basis in the claim. We leave these issues to be
addressed in the event of any further prosecution before the examiner.
appellant and the examiner with regard to the merits of these
rejections.
OPINION
In reaching our decision in this appeal, we have given
careful consideration to the appellant's specification and
claims , to the applied Kiska patent, and to the respective2
positions articulated by the appellant and the examiner. As a
consequence of our review, we shall not sustain the examiner's
rejection for the reasons which follow.
Claims 1 through 9 recite a ladder system comprising,
inter alia, first and second rails having first and second
non-linear slots, respectively, in proximity to the bottom
thereof. Claim 10 recites a ladder rail comprising a web
portion and a flange portion extending from the web portion
and having a non-linear rail slot in the web portion through
which a bolt extends for attaching a ladder shoe to the web
Appeal No. 1999-0639 Page 4
Application No. 08/592,109
portion. Claims 11 and 12 recite a method of climbing a
ladder having a curved slot in the rails thereof and claim 13
recites a method of forming a ladder comprising steps of
piercing curved slots in the ladder rails. As explained on
page 2 of the appellant's specification, "a shoe that contains
a curved slot must be made larger than others to contain the
curved slot." According to the appellant, providing the non-
linear slot in the rail allows for a "smaller, lighter weight
and cheaper shoe."
In rejecting claims 1 through 13 as being unpatentable
over Kiska, the examiner recognizes that the Kiska ladder
differs from the claimed invention in that Kiska discloses
provision of non-linear slots (62) in side plate portions (56,
58) of rail attachment portions (12) of ladder shoes (10)
attached to the bottom of ladder rails (14), while these
claims require the non-linear slot to be in the ladder rail.
To overcome this deficiency, it is the examiner's position
that "it would have been an obvious matter of reversal of
parts to one of ordinary skill in the art to have the slot in
the rail web rather than the ladder foot" (answer, page 5).
The examiner adds that
Appeal No. 1999-0639 Page 5
Application No. 08/592,109
[t]here are only two possible locations for the
slot, the ladder rail or the ladder foot. It would
be desirable to locate the slot in the ladder rail
since the rail would require only one piece to be
cut, whereas locating the slot in the ladder foot
would require two pieces to be cut and create
potential for slot misalignment due to bending of
the parallel ladder foot members" [answer, page 7].
The appellant argues, inter alia, that there is no basis
in the prior art to arrive at the appellant's invention and
that the examiner's conclusion of obviousness is grounded upon
impermissible hindsight (brief, page 16). We agree with the
appellant.
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 assumptions or hindsight
reconstruction to supply deficiencies in the factual basis.
In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 177 (CCPA
1967), cert. denied, 389 U.S. 1057 (1968).
The only rationale offered by the examiner to support the
conclusion that the proposed modification would have been
obvious is that location of the non-linear slot in the rail
Appeal No. 1999-0639 Page 6
Application No. 08/592,109
rather than the ladder shoe would require only one cut rather
than two cuts, thereby minimizing potential for slot
misalignment due to bending of the parallel ladder foot
members. However, the examiner has not supported this
contention with evidence that slot misalignment is a problem
associated with the construction disclosed by Kiska. There is
certainly no indication that Kiska recognized such a problem
and it is not apparent to us that the arrangement disclosed by
Kiska (two aligned slots in the side plate portions of the
ladder shoe flanking an aligned aperture in the ladder rail)
would necessarily present any increased potential for
misalignment as compared with the modified arrangement
proposed by the examiner (two aligned apertures in the side
plate portions flanking an aligned slot in the ladder rail).
Accordingly, it appears to us that, in rejecting claims 1
through 13, the examiner has relied on impermissible hindsight
using the appellant's claims as a template to reconstruct the
invention.
Moreover, with regard to claims 11 and 12, contrary to
the examiner's assertion (answer, page 5), we find no teaching
in Kiska of the steps of placing the feet of the ladder shoes
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Application No. 08/592,109
on the ground "with the rails vertically oriented relative to
the ground" and rotating the rails of the ladder system
relative to the ladder shoes at least 15 degrees as claimed.
Similarly, with regard to claim 13, we find no teaching in
Kiska of the steps of piercing a first rail with a first
curved slot while a first rail is oriented with its flange
facing up and piercing a second rail with a second curved slot
while the second rail is oriented with its flange facing down,
as required by the claim.
For all of the foregoing reasons, we shall not sustain
the examiner's rejection of claims 1 through 13 under 35
U.S.C. § 103 as being unpatentable over Kiska.
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Application No. 08/592,109
CONCLUSION
To summarize, the decision of the examiner to reject
claim 1 through 13 under 35 U.S.C. § 103 is reversed.
REVERSED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOHN P. McQUADE ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JENNIFER D. BAHR )
Administrative Patent Judge )
Appeal No. 1999-0639 Page 9
Application No. 08/592,109
ANSEL M SCHWARTZ
ONE STERLING PLAZA
201 NORTH CRAIG STREET
SUITE 204
PITTSBURGH, PA 15213
JDB/dal
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Application No. 08/592,109