Ex Parte Woller

Board of Patent Appeals and Interferences

Jun 13, 2012

10426550 (B.P.A.I. Jun. 13, 2012)

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