Ex Parte Ashmus

Patent Trial and Appeal Board

Mar 14, 2013

11207409 (P.T.A.B. Mar. 14, 2013)

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.
11/207,409 08/19/2005 James L. Ashmus ASH-101US 7693
24314 7590 03/15/2013
JANSSON SHUPE & MUNGER LTD.
245 MAIN STREET
RACINE, WI 53403
EXAMINER
CHIN SHUE, ALVIN C
ART UNIT PAPER NUMBER
3634
MAIL DATE DELIVERY MODE
03/15/2013 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 JAMES L. ASHMUS
____________________

Appeal 2011-000560
Application 11/207,409
Technology Center 3600
____________________

Before JENNIFER D. BAHR, MICHAEL C. ASTORINO, and
MICHELLE R. OSINSKI, Administrative Patent Judges.

OSINSKI, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2011-000560
Application 11/207,409

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STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from a final rejection of
claims 1-4, 6, 10-14, and 17-19. Claims 51, 7-9, 15, and 20-24 have been
withdrawn, and claim 16 has been cancelled. Br. 2. We have jurisdiction
under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
CLAIMED SUBJECT MATTER
The claimed subject matter relates to a “flexible ladder-like device in
the form of a belting ladder designed for secure, relatively effortless descent
of a person from a building or the like.” Spec. 2, ll. 29-31. Claims 1 and 11
are the independent claims on appeal. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A belting ladder comprising:
• a one-piece elongate band of flat reinforced
polymeric conveyor-type belting material having a
belt thickness and being flexible to the extent that
it can be rolled into a coil, the band:
• in its use position having a length along a
gravity-defined longitudinal axis and a width along
a coiled axis, the length being at least several
multiple times greater than the width,
• including a plurality of flexible elongate
reinforcement elements therein which extend
throughout its entire length,

1 The Examiner withdrew claim 5 from consideration (Final Rej. 1), but
includes claim 5 in the rejection under 35 U.S.C. § 112, second paragraph.
Final Rej. 2; Ans. 3; contra id.at 2 (omitting claim 5 in the list of rejected
claims). Further, Appellant requests review of the rejection of claim 5. Br.
4. Accordingly, we treat claim 5 as rejected and involved in this appeal.
The Examiner may wish to clarify the status of claim 5 upon return of
jurisdiction of this application to the Examiner.
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• having a plurality of longitudinally-spaced
apertures therethrough along its length and aligned
along the longitudinal axis and recurring in a
number multiple times greater than the number of
apertures across the width, the apertures each
having a substantially transverse edge portion
forming a rung-like feature for weight-bearing
engagement by a person's foot or hand, the
transverse edge portions having substantially the
same thickness as the belt thickness and being the
only weight-bearing foot-engagement features, the
apertures and edge portions being permanently
dimensioned to freely receive a person's foot, and
• being sufficiently fixed in its form to retain
its stability and the shape of its apertures despite
weight-bearing in a direction along its length; and
• an attachment device at an end of the band.

REJECTIONS
Appellant seeks review of the following rejections:
(1) the rejection of claims 1-6, 10-14, and 17-19 under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to particularly point
out and distinctly claim the subject matter which Appellant regards as the
invention (Ans. 3-4);
(2) the rejection of claims 1-4, 6, and 10-14 under 35 U.S.C. § 103(a)
as unpatentable over Borgfeldt (US 256,874, iss. Apr. 25, 1882), Lehr (US
3,756,593, iss. Sep. 4, 1973), and Tucker (US 227,324, iss. May 4, 1880)
(Ans. 4-5);
(3) the rejection of claims 11-14 and 19 under 35 U.S.C. § 103(a) as
unpatentable over Borgfeldt, Lehr, Tucker, and May (US 2001/0045323 A1,
pub. Nov. 29, 2001) (Ans. 5);
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(4) the rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Borgfeldt, Lehr, Tucker, and Murphy (US 285,832, iss. Oct. 2, 1883)
(Ans. 5); and
(5) the rejection of claims 11-14 under 35 U.S.C. § 103(a) as
unpatentable over Borgfeldt, Lehr, Tucker, and Melville (GB 2 222 848 A,
pub. Mar. 21, 1990) (Ans. 5-6).
ANALYSIS
Rejection of claims 1-6, 10-14, and 17-19 as indefinite

The Examiner concluded that claims 1-6, 10-14, and 17-19 were
indefinite for failing to particularly point out and distinctly claim the subject
matter which Appellant regards as the invention because the recited
limitation “the number of apertures across the width” set forth in
independent claims 1 and 11 lacks antecedent basis. Ans. 3-4 (emphasis
added). The Examiner determined that it was “unclear if [A]ppellant is
claiming more than one aperture across the width of the band” (Id. at 4)
since the recited limitation “suggests that more than one aperture is across
the width while the plurality of apertures along the length would inherently
provide antecedent basis for only one aperture across the width” (Id. at 8).
We agree with Appellant that the recitation of the plurality of
longitudinally spaced apertures inherently introduces some number of
apertures across the width of the band. See Br. 5 (citing MANUAL OF PATENT
EXAMINING PROCEDURE (MPEP), § 2173.05(e)). Claims 1 and 11 leave
open the possibility that there may be only one aperture or there may be
more than one aperture across the width of the band at a certain longitudinal
location in various embodiments. However, this breadth regarding whether
there is one, or more than one, aperture across the width of the band at a
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certain longitudinal location does not prevent one skilled in the art from
understanding what is claimed when the claim is read in light of the
Specification. Merely that a claim is broad does not mean that it is
indefinite. See In re Johnson, 558 F.2d 1008, 1016 n.17 (CCPA 1977); In re
Miller, 441 F.2d 689, 693 (CCPA 1971); In re Gardner, 427 F.2d 786, 788
(CCPA 1970). We determine that one of ordinary skill in the art would
understand what is claimed—the number of apertures recurring along the
length of the belting material being multiple times greater than the number
of apertures recurring across the width of the belting material. See
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed.
Cir. 1986). For the forgoing reasons, we do not sustain the rejection of
claims 1-6, 10-14, and 11-19 as indefinite under 35 U.S.C. § 112, second
paragraph.

Rejection of claims 1-4, 6, and 10-14 under
35 U.S.C. § 103(a) as unpatentable over Borgfeldt, Lehr, and Tucker

Appellants argue claims 1-4, 6, and 10-14 as a group. Br. 5-10. We
select claim 1 as the representative claim, and claims 2-4, 6, and 10-14 stand
or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii)(2011).
The Examiner found that Borgfeldt teaches substantially all of the
limitations of independent claim 1, except for, most significantly, the
material of the band. Ans. 4. The Examiner found that Lehr’s belting ladder
material is “considered to be convey[o]r-type belting material” because it is
strong yet flexible based on Appellant’s definition of this term in the
Specification. Id. at 9-10; see also id. at 10 (quoting Spec. 3, ll. 15-19, 24-
26) (“The term ‘convey[o]r belting’ as used herein refers to tough flat
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polymeric materials such as rubber, nylon, PVC or other strong yet flexible
material which is flexible in the sense and to the extent that it can be rolled
up into a coil but still retains sufficient form when a user’s weight is applied
at an aperture therein. . . . There is a wide variety of conveyor belting
material which is suitable for the present invention and the above definition
is in no way limiting for a special type of belting material.”) (emphasis
added). The Examiner found in particular that that the material of Lehr is
“made of a wire mesh reinforced polymer sheet with holes cut out for
accommodating hands and feet to assist in climbing.” Id. at 9, 13-14; see
also id. (quoting Lehr, col. 4, ll. 14-17) (“the sheet 50 has a wire mesh
reinforcement 70 sandwich[ed] between polyurethane layers 71 and 72”);
see also id. at 11 and Lehr, col. 3, ll. 41-44 (“[t]he sheet 50 is hung over
support member 52 . . . . The sheet 50 is folded around support member 52
with a slight overlap . . . .”).
The Examiner also found that Borgfeldt teaches a ladder comprising a
conveyor-type material in accordance with the Specification’s definition of
“convey[o]r belting” because its woven material is also strong yet flexible
(Ans. 9-10, 11-12, 13). The Examiner concluded it would have been “within
the scope of one of ordinary skill in the art to select from known available
materials for their known properties and advantages” (Id. at 12) and that
“one of ordinary skill in the art could have combined the elements [of
Borgfeldt and Lehr] as claimed, or substituted one known element for
another, using known methods with no change in their respective functions
[and] [s]uch a combination would have yielded predictable results to one of
ordinary skill in the art” (Id. at 14).
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Appellant contends that the cited references fail to teach “reinforced
polymeric conveyor-type belting material” as recited in the claims. Claims
App’x. (emphasis added); Br. 5-6, 9. In particular, Appellant contends that
“[n]o one has previously conceived of using polymeric conveyor-belting
material for this purpose [i.e., a belting ladder], and prior art of record would
not lead anyone to do so” (Br. 6) such that “there is no motivation to
combine the cited references” (Id. at 5). Appellant further contends that “the
rejections use both improper hindsight and the teaching of [A]ppellant’s
patent application itself.” Id. at 10. We agree with the Examiner that under
Appellant’s specific definition of conveyor belting set forth in the
Specification, both Borgfeldt and Lehr teach “conveyor-type belting
material” and that the Examiner’s proposed combination of predictably
substituting Lehr’s polymeric conveyor-type belting material for Borgfeldt’s
woven conveyor-type belting material has a rational underpinning and is not
based on improper hindsight reasoning. See KSR Int’l Co. v. Teleflex, Inc.,
550 U.S. 398, 416 (2007) (citing In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
Appellant next contends that “the Examiner failed to give sufficient
attention to the detailed factual evidence of unobviousness provided in the
Rule 132 declarations of Edward Eeg and John Meiers.” Br. 6. We consider
anew the issues of obviousness under 35 U.S.C. § 103, carefully evaluating
and weighing both the evidence relied upon by the Examiner and the
evidence provided by Appellant. See In re Piasecki, 745 F.2d 1468, 1472
(Fed. Cir. 1984); Stratoflex Inc. v. Aeroquip Corp., 713 F.2d 1530, 1538
(Fed. Cir. 1983).
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First, Appellant contends that the Declaration of Edward Eeg
(hereinafter “Eeg Declaration”) establishes that Appellant’s claimed use of
conveyor belting material as a ladder “is completely improbable and
unexpected” because “conveyor belts are subjected to different stresses
[normal to the belting surface] than those applicable in [A]ppellant’s
inventive belting ladder [parallel to the belting surface].” Br. 7; see also Eeg
Declaration, paras. 11, 14.
However, the Eeg Declaration fails to provide comparative data
showing substantially improved results in connection with withstanding
stress parallel to the belting surface for Appellant’s conveyor belt vis-à-vis
the disclosures of Borgfeldt and Lehr. See In re De Blauwe, 736 F.2d 699,
705 (Fed. Cir. 1984) (stating “[w]hen an article is said to achieve unexpected
(i.e. superior) results, those results must logically be shown as superior
compared to the results achieved with other articles”). In other words, the
Eeg Declaration fails to establish that withstanding stress parallel to the
belting surface is due to features recited in claim 1 and not present in the
combination of Borgfeldt and Lehr. On the other hand, the Examiner has
provided strong evidence of obviousness, including the predictable
substitution of Lehr’s material for Borgfeldt’s material.
Second, Appellant contends that the Declaration of John Meiers
(hereinafter “Meiers Declaration”) supports that “‘others have tried and
failed to solve’ the long-standing need for a fire escape which has ‘the
capability for long-time storage to be available decades after installation, . . .
the stability allowing for relatively confident use by an escaping person . . .
[and] the flexibility for compact storage.’” Br. 8 (quoting Meiers
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Declaration 4, para. 10); see also Meiers Declaration, paras. 14, 15.2 The
Meiers Declaration does not provide evidence of the efforts and resources
expended during the time corresponding to the length of need in attempts to
solve the problem, or that others specifically tried and failed to solve the
problem. Ans. 16; see also Railroad Dynamics, Inc. v. Stuki Co., 579 F.
Supp. 353, 363 (E.D. Pa. 1983), aff’d 727 F.2d 1506 (Fed. Cir. 1984), cert.
denied 105 U.S. 220 (1984). It appears that Borgfeldt’s fire escape has the
capability for long-term storage (the band is made of coarse cotton or wool
with selvage at each edge to prevent it from unraveling) (Borgfeldt, ll. 49-
53); stability for confident use by an escaping person (the band “give[s]
additional insurance of safety, and enabling even the most unskilled to use
the apparatus without difficulty”) (Borgfeldt, ll. 43-46); and flexibility for
compact storage (the band is “a flexible escape that should have all the
advantages of a rope”) (Borgfeldt, ll. 17-18), such that these needs were
satisfied before invention by Appellant. See Newell Co. v. Kenney Mfg. Co.,
864 F.2d 757, 768 (Fed. Cir. 1988). As such, Appellant failed to provide
objective evidence sufficient to establish the existence of a long-felt need or
to establish that Appellant’s claimed invention satisfied any such long-felt
need.

2 We have considered Appellant’s contention that the Meiers Declaration
points out that “any modification of the Lehr device to have a greater
gravity-defined dimension with orderly aligned same-size apertures would
be directly against the teachings and the essence of the Lehr device” (Br. 9),
but find such contention unpersuasive because it fails to address the rejection
as articulated by the Examiner which relies on modification of the Borgfeldt
device, not the Lehr device.
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While we give weight to the evidence offered by Appellant in an
effort to prove unexpected results and long-felt need, we conclude that the
Examiner’s evidence of obviousness outweighs Appellant’s evidence of
nonobviousness. See In re Fenton, 451 F.2d 640, 643 (CCPA 1971) (the
court balanced the Patent Office’s case against the strength of appellant's
objective evidence of non-obviousness); see also Leapfrog Enters., Inc. v.
Fisher-Price, Inc., 485 F.3d 1157, 1162 (Fed. Cir. 2007) (“given the strength
of the prima facie obviousness showing, the evidence on secondary
considerations was inadequate to overcome a final conclusion that [the
claimed subject matter] would have been obvious”).
For the foregoing reasons, we determine that the Examiner did not err
in concluding that the subject matter of claims 1-4, 6, and 10-14 would have
been obvious from the combination of Borgfeldt, Lehr, and Tucker, and we
sustain the rejection of claims 1-4, 6, and 10-14 under 35 U.S.C. § 103(a).

Rejection of claims 11-14 and 19 under
35 U.S.C. § 103(a) as unpatentable over Borgfeldt, Lehr, Tucker, and May

Appellant’s arguments in support of the patentability of claims 11-14
and 19 relate to the perceived deficiencies in the combined teachings of
Borgfeldt, Lehr, and Tucker. Br. 10. Since we have found no such
deficiencies in the combination of Borgfeldt, Lehr, and Tucker, we
determine that the Examiner did not err in concluding that the subject matter
of claims 11-14 and 19 would have been obvious from the combination of
Borgfeldt, Lehr, Tucker, and May, and we sustain the rejection of claims 11-
14 and 19 under 35 U.S.C. § 103(a).

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Rejection of claim 17 under 35 U.S.C. § 103(a)
as unpatentable over Borgfeldt, Lehr, Tucker, and Murphy

Appellant’s arguments in support of the patentability of claim 17
relate to the perceived deficiencies in the combined teachings of Borgfeldt,
Lehr, and Tucker. Br. 11. Since we have found no such deficiencies in the
combination of Borgfeldt, Lehr, and Tucker, we determine that the Examiner
did not err in concluding that the subject matter of claim 17 would have been
obvious from the combination of Borgfeldt, Lehr, Tucker, and Murphy, and
we sustain the rejection of claim 17 under 35 U.S.C. § 103(a).

Rejection of claims 11-14 under 35 U.S.C. § 103(a)
as unpatentable over Borgfeldt, Lehr, Tucker, and Melville

Appellant’s arguments in support of the patentability of claims 11-14
relate to the perceived deficiencies in the combined teachings of Borgfeldt,
Lehr, and Tucker. Br. 11. Since we have found no such deficiencies in the
combination of Borgfeldt, Lehr, and Tucker, we determine that the Examiner
did not err in concluding that the subject matter of claims 11-14 would have
been obvious from the combination of Borgfeldt, Lehr, Tucker, and
Melville, and we sustain the rejection of claims 11-14 under 35 U.S.C.
§ 103(a).

DECISION
The Examiner’s rejection of claims 1-6, 10-14, and 17-19 under 35
U.S.C. § 112, second paragraph is REVERSED.
The Examiner’s rejections of claims 1-4, 6, 10-14, 17, and 19 under
35 U.S.C. § 103(a) is AFFIRMED.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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