Ex Parte Whitcomb

Patent Trial and Appeal Board

Aug 30, 2017

13561975 (P.T.A.B. Aug. 30, 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.
13/561,975 07/30/2012 Myron Whitcomb WTCM001AE 7196
71700 7590 09/01/2017
John Anderton
1725 SE 72nd Ave.
PORTLAND, OR 97215
EXAMINER
CHAVCHAVADZE, COLLEEN MARGARET
ART UNIT PAPER NUMBER
3634
NOTIFICATION DATE DELIVERY MODE
09/01/2017 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
PATENTFORGE@GMAIL.COM
anderton @ patentforge. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte MYRON WHITCOMB
Appeal 2016-001785
Application 13/561,975
Technology Center 3600
Before CARLA M. KRIVAK, DAVID J. CUTITTAII, and
PHILLIP A. BENNETT, Administrative Patent Judges.
CUTITTA, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1—7, which are all the claims under consideration on
appeal.1 We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.
1 Claims 8—18 are withdrawn from consideration. See Final Act. 1.
Appeal 2016-001785
Application 13/561,975
STATEMENT OF THE CASE
According to Appellant, the claimed invention relates to a ladder
including a grip. See Spec. 17.2 Claim 1 is independent and is reproduced
below with disputed limitations in italics:
1. A ladder lift system comprising:
a ladder including a rail with a web and flanges; and
a grip with a top surface, a gripping surface and a
longitudinal axis through the center of the grip,
the top surface and gripping surface extending along the
longitudinal axis and the gripping surface abuts opposite sides of
the top surface;
a slot opening to the top surface, and extending toward the
longitudinal axis within the gripping surface;
where the slot is configured to accept and contact opposite
faces of a flange of the ladder rail along the slot to frictionally
retain the grip to the flange.
Appeal Br. 7.
REFERENCE AND REJECTION
Claims 1—7 stand rejected under 35 U.S.C. § 102(b) as anticipated by
Thompson et al. (US 6,021,865; Feb. 8, 2000) (“Thompson”). Final Act. 2—
4.
Our review in this appeal is limited only to the above rejection and
issues raised by Appellant. Arguments not made are waived. See MPEP
§ 1205.02; 37 C.F.R. §§ 41.37(c)(l)(iv) and 41.39(a)(1).
2 This Decision refers to: (1) Appellant’s Specification, filed July 30, 2012
(“Spec.”); (2) the Final Office Action (“Final Act.”), mailed July 7, 2014;
(3) the Appeal Brief (“Appeal Br.”), filed August 27, 2014; and (4) the
Examiner’s Answer (“Ans.”), mailed September 9, 2014.
2
Appeal 2016-001785
Application 13/561,975
ISSUES
1. Does the Examiner err in finding Thompson discloses “a grip,” as
recited in claim 1 ?
2. Does the Examiner err in finding Thompson discloses “a slot” as
recited in claim 1 ?
CONTENTIONS AND ANALYSIS
We disagree with Appellant’s contentions with respect to independent
claim 1, and we adopt as our own (1) the Examiner’s findings and reasoning
set forth in the Office Action from which this appeal is taken (Final Act. 2—
4) and (2) the Examiner’s reasoning set forth in the Examiner’s Answer
(Ans. 3—6). We highlight the following points for emphasis.
As an initial matter, Appellant argues the Examiner’s objection to the
Specification. See Final Act. 2. Objections, however, are not reviewable by
appeal to the Board. An objection is a petitionable matter and not an
appealable matter and is not within the jurisdiction of the Board. See In re
Mindick, 371 F.2d 892, 894 (CCPA 1967).
Appellant argues that the Examiner improperly made the rejection
final and requests the “Office Action be made non-fmal.” Appeal Br. 4.
That decision is not properly before us. See MPEP 2272 (“In the event that
the patent owner is of the opinion that (A) a final rejection is improper or
premature, or (B) that an amendment submitted after final rejection complies
with 37 CFR 1.116, but the examiner improperly refused entry of such an
amendment, the patent owner may file a petition under 37 CFR 1.181.”).
3
Appeal 2016-001785
Application 13/561,975
Issue 1
The Examiner finds Thompson’s load-dispersing device 55 discloses
“a grip,” as recited in claim 1. Final Act. 2 (citing Thompson Figs. 1 and 2,
item 55).
Appellant argues the device of Thompson is directed to a load
dispersing device and is not a grip. Appeal Br. 5.
We find Appellant’s argument unpersuasive. We agree with the
Examiner’s finding that Thompson’s load-dispersing device 55 discloses “a
grip,” as recited in claim 1. Appellant, in essence, argues the Examiner’s
interpretation of the term “grip” as recited in claim 1 is unreasonably broad.
Appellant, however, fails to establish the Examiner’s interpretation is not the
broadest reasonable interpretation consistent with Appellant’s Specification.
See In re Am. Acad. ofSci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004).
Under a broadest reasonable interpretation, the words of the claim must be
given their plain meaning unless the plain meaning is inconsistent with the
specification. In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989). The plain
meaning of a term means the ordinary and customary meaning given to the
term by those of ordinary skill in the art at the time of the invention. In re
Suitco Surface, Inc., 603 F.3d 1255, 1259-60 (Fed. Cir. 2010). The
presumption that a term is given its ordinary and customary meaning may be
rebutted by Appellant clearly setting forth a different definition of the term
in the specification. In re Morris, 111 F.3d 1048, 1054 (Fed. Cir. 1997).
Here, Appellant fails to demonstrate that “grip” has been explicitly
defined in Appellant’s Specification in a way that is inconsistent with the
Examiner’s interpretation. The Examiner, in turn, finds the “ordinary [and
customary] meaning of the word ‘grip’ (noun) includes ‘a part or device for
4
Appeal 2016-001785
Application 13/561,975
gripping.’” Ans. 4 (citing the Merriam-Webster dictionary online,
http://www.merriamwebster.com/dictionary/grip (last visited September 3,
2014)). We additionally note the verb “grip” is further defined as to “hold
firmly.” See https://www.merriam-webster.com/dictionary/grip (last visited
August 15, 2017)). “Absent an express definition in their specification,
[even if] appellants can point to definitions or usages that conform to their
interpretation [this] does not make the PTO’s definition unreasonable when
the PTO can point to other sources that support its interpretation.” Morris,
111 F.3d at 1056. Accordingly, we determine the Examiner’s interpretation
to be reasonable and consistent with Appellant’s Specification. In light of
this interpretation, we agree with the Examiner’s finding that the claimed
“grip” is anticipated by Thompson’s load-dispersing device 55. Ans. 4—7.
Specifically, the Examiner finds “the device of Thompson is certainly one
form of such a grip as it is a device for gripping the flanges on the side rail
of a ladder.” Ans. 4. Also, we note Thompson discloses load-dispersing
device 55 is designed to grip the surface of the structure receiving the ladder,
such as a gutter or wall, to minimize slippage of the ladder. Thompson 1:9—
24.
Appellant further argues “Thompson also does not have a gripping
surface for a hand as recited in claim 1.” Appeal Br. 6. We find this
argument unpersuasive. We agree with the Examiner’s determination that
the argument is not commensurate with the scope of the claim because
“currently there is not any claim language directed to a gripping surface for a
hand. “ Ans. 6. “The invention disclosed . . . may be outstanding in its
field, but the name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362, 1369 (Fed. Cir. 1998).
5
Appeal 2016-001785
Application 13/561,975
Accordingly, we agree with the Examiner’s finding that Thompson
discloses “a grip,” as recited in claim 1.
Issue 2
The Examiner finds Thompson’s slit 119 discloses “a slot,” as recited
in claim 1. Final Act. 3 (citing Thompson Figs. 1 and 2, and item 119).
Appellant argues,
Thompson teaches away from gripping only the flange of the
ladder as not adequately maintaining the device in position on
the ladder. The slot extending from the surface is not
configured to grip the flange as recited in claim 1. The slot
extending from the surface grips the web of the ladder.
Appeal Br. 5—6.
We find Appellant’s argument unpersuasive. We agree with the
Examiner that Appellant’s argument is inconsistent with the scope of claim 1
because “there’s no claim language that limits the grip to gripping only a
flange and not both the flange and the web of the ladder side rail.” Ans. 5.
Furthermore, we agree with the Examiner’s finding that Thompson discloses
load-dispersing device’s slot 119 gripping flange 59. Final Act. 3; Ans. 5—6.
As an additional example, Thompson discloses “the load dispersing device
55 encloses the flange 59 and part of the web 60.” Thompson 8:39-42.
Thompson further discloses “[t]he locking area 10 comprises the portion of
the body 63 which is configured to open and wrap around the flange 59.”
Thompson 8:63—65.
Because we agree with the Examiner’s finding that Thompson
discloses the claimed slot (Final Act. 3), we find Appellant’s teaching away
argument unpersuasive (Appeal Br. 5—6). “If the rejection under § 102 is
proper,. . . appellant cannot overcome it by showing such unexpected results
6
Appeal 2016-001785
Application 13/561,975
or teaching away in the art, which are relevant only to an obviousness
rejection.” In re Malagari, 499 F.2d 1297, 1302 (CCPA 1974).
Appellant also argues “Thompson does not have a slot that extends
from the top surface towards the longitudinal axis.” Appeal Br. 6. We find
Appellant’s argument unpersuasive because we agree with the Examiner’s
finding that Thompson’s slot 119 extends from the top surface towards a
longitudinal axis of load dispersing device 55. Final Act. 3 (citing
Thompson Fig. 2; Ans. 6).
We, therefore, sustain the 35 U.S.C. § 102(b) rejection of claim 1, as
well as dependent claims 2—7, which are not argued separately. See
generally Appeal Br. 2—6; See also 37 C.F.R. § 41.37(c)(l)(iv).
DECISION
We affirm the Examiner’s decision rejecting claims 1—7.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
7