Ex Parte WollerDownload PDFBoard of Patent Appeals and InterferencesJun 13, 201210426550 (B.P.A.I. Jun. 13, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte RONALD R. WOLLER ____________ Appeal 2010-006380 Application 10/426,550 Technology Center 3600 ____________ Before LINDA E. HORNER, MICHAEL C. ASTORINO, and JOHN W. MORRISON, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ronald R. Woller (Appellant) seeks our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claim 24. Claims 1-23 and 25-27 have been canceled. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM. Appeal 2010-006380 Application 10/426,550 2 THE INVENTION Appellant’s claimed invention relates to “a modular ladder device for climbing trees and poles.” Spec. 1, para. [0001]. Claim 24 is reproduced below. 24. A modular ladder for mounting to a tree or pole comprising: a plurality of separate sections adapted to be mounted to the tree or pole, each of the plurality of sections including a first step, a second step, a frame extending between the first and second steps and spacing the first and second steps apart from one another, and a flexible mounting element for securing the frame to the tree or pole, and wherein at least the first step has a slot extending inwardly from an outer edge thereof, with the slot configured to receive a frame of another of the sections, for permitting nesting of the sections for storage and transport, wherein the first step includes left and right foot portions with the slot defined therebetween, and the frame comprises a single vertical member that is radially aligned with the slot. THE REJECTIONS Appellant seeks review of the following rejections: 1. Claim 24 is rejected under 35 U.S.C. § 102(b) as anticipated by Morris (US 6,138,792; iss. Oct. 31, 2000). 2. Claim 24 is rejected under 35 U.S.C. § 102(b) as anticipated by Jenkins (US 5,816,362; iss. Oct. 6, 1998). 3. Claim 24 is rejected under 35 U.S.C. § 102(e) as anticipated by Garbs (US 2003/0146048 A1; pub. Aug. 7, 2003). CONTENTIONS AND ISSUE The Examiner determined that the modular ladder disclosed in Jenkins having a slot defined between step portions 15 anticipates claim 24. Ans. 4- Appeal 2010-006380 Application 10/426,550 3 6. Appellant argues that the portion identified by the Examiner as the claimed slot does not anticipate claim 24 because the portion identified by the Examiner does not extend “inwardly from the outer/non-tree side of the step, as recited in claim 24.” App. Br. 5. Appellant further argues that Jenkins does not disclose the slot configured for permitting nesting of the sections because “any alleged slots in Jenkins are not configured for or capable of receiving a single frame member of another section to permit compact nesting.” Id. The issue presented by this appeal is whether Jenkins discloses a first step having “a slot extending inwardly from an outer edge thereof, with the slot configured to receive a frame of another of the sections, for permitting nesting of the sections for storage and transport” as claimed. ANALYSIS Anticipation by Jenkins As to the limitation of the slot extending inwardly from the outer edge of the step, claim 24 does not recite the orientation of the modular ladder with respect to the tree or pole on which it is mounted and does not define an “outer edge” of the first step as being the “non-tree side” of the step. The claim language “outer edge” is broad enough to encompass, for example, a slot that extends inwardly from an edge of the step that is opposite the frame. Compare Appellant’s Figure 1 (showing slot 21 extending inwardly from an edge of the step opposite vertical member 25) and Jenkins, Figure 1 (showing a slot defined between standoff members 15 extending inwardly from an edge of the standoff members opposite vertical support member 2). As such, claim 24 does not call for the outer edge of the first step to be the non-tree side of the step. Appeal 2010-006380 Application 10/426,550 4 Even if one were to interpret claim 24 to call for the slot to extend inwardly from the non-tree side of the step, the modular ladder of Jenkins does not differ structurally from the claimed modular ladder. The Examiner found that the standoff members 15 of Jenkins are the claimed left and right step portions. Ans. 5 (“each step 3 and 5 comprise step portions 15.”) Appellant does not contest this finding. See App. Br. 5; Reply Br. 3 (discussing Jenkins). While Jenkins is intended to be used such that the standoff members 15 engage the tree (see Jenkins, col. 4, ll. 16-19; fig. 8), if one were to place the vertical support member 2 of Jenkins’s ladder against the tree, then the standoff members 15 extend radially outwardly1 from the tree to form the left and right foot portions of the first step with the area noted by the Examiner defining a slot therebetween extending inwardly from an outer, non-tree edge of the step. As such, we agree with the Examiner’s finding that Jenkins discloses a first step having a slot extending inwardly from an outer edge thereof. As to the limitation of the slot being configured to permit nesting, we find that Jenkins provides sufficient evidence to establish a sound basis for the Examiner’s belief that the area between standoff members 15 identified by the Examiner as the slot is capable of receiving a single vertical member of another section for permitting nesting for storage and transport. See In re Spada, 911 F.2d 705, 708 (Fed. Cir. 1990). The area between standoff members 15 is capable of receiving the vertical support member 2 of another section, and to nest the sections, the user would simply position the vertical 1 The Specification describes that the modular ladder of the embodiment of Figure 1 includes steps that “extend radially outwardly in the direction of direction arrow 18 away from the center of the tree T when mounted to the tree or pole.” Spec. 5, para. [0021]. Appeal 2010-006380 Application 10/426,550 5 member of the second section so that the steps of the second section are disposed either above or below the steps of the first section. Appellant’s argument that Jenkins does not explicitly disclose, teach, or suggest nesting is not persuasive in light of the Examiner’s determination that capacity to nest the modular sections is an inherent characteristic of the modular ladder of Jenkins. Further, Appellant’s bald assertion that “any alleged slots in Jenkins are not configured for or capable of receiving a single frame member of another section to permit compact nesting” (App. Br. 5), is not persuasive without some evidence or explanation as to why the Examiner’s determination is erroneous. Where, as here, the Patent Office has reason to believe that a functional limitation is an inherent characteristic of the prior art, Appellant has the burden to show that the prior art does not possess that characteristic. See In re Best, 562 F.2d 1252, 1254-55 (CCPA 1977) (quoting In re Swinehart, 439 F.2d 210, 212-13 (CCPA 1971)); see also Spada, 911 F.2d at 708 (“when the PTO shows sound basis for believing that the products of the applicant and the prior art are the same, the applicant has the burden of showing that they are not.” (citations omitted)) and In re King, 801 F.2d 1324, 1327 (Fed. Cir. 1986) (finding it insufficient for an appellant to merely assert that the prior art does not inherently possess the characteristic relied on and challenge the PTO to prove the contrary by experiment or otherwise. “The PTO is not equipped to perform such tasks.”). Appellant fails to persuade us the Examiner’s finding that the structure of Jenkins is capable of the claimed nesting function is without sound basis or that the modular ladder of Jenkins is incapable of nesting. Accordingly, we affirm the Examiner’s rejection of claim 24 as anticipated by Jenkins. Appeal 2010-006380 Application 10/426,550 6 Remaining Rejections Because our affirmance of the rejection of claim 24 based on anticipation by Jenkins is dispositive as to the sole claim on appeal, we do not reach the Examiner's cumulative rejections based on anticipation by Morris and Garbs. CONCLUSION Jenkins discloses a first step having “a slot extending inwardly from an outer edge thereof, with the slot configured to receive a frame of another of the sections, for permitting nesting of the sections for storage and transport” as claimed. DECISION We AFFIRM the decision of the Examiner to reject claim 24. 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)(1)(iv). AFFIRMED Klh Copy with citationCopy as parenthetical citation