Ex Parte Marini

Patent Trial and Appeal Board

Nov 25, 2014

11696412 (P.T.A.B. Nov. 25, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SOLOMON MARINI
____________________

Appeal 2012-009781
Application 11/696,412
Technology Center 3600
____________________

Before JOHN C. KERINS, LYNNE H. BROWNE , and
MICHAEL L. WOODS, Administrative Patent Judges.

WOODS, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Solomon Marini (“Appellant”) seeks our review under 35 U.S.C.
§ 134 of the final rejection of claims 4, 5, 7, 8, 15, 18–21, and 23–25.
Appeal Br. 3. Claims 1–3, 6, 9–14, 16, 17, and 22 have been cancelled. Id.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal 2012-009781
Application 11/696,412

2
CLAIMED SUBJECT MATTER
Appellant’s invention is directed to personal fall protection devices.
See, e.g., Spec. 1, para. 1. Independent claims 4 and 19 are illustrative and
are reproduced below, with emphasis on key disputed claim limitations.
4. A fall protection system comprising:
a first support element;
a second support element;
a third support element extending between the first and
second support elements and movably connected to the first and
second support elements; and
a harness connected to the third support element;
wherein the third support element comprises a tubular
rigid member extending transversely between the first and
second support elements and a line extending through an
interior of the tubular rigid member, wherein the tubular rigid
member spans the distance between the first and second support
elements.

19. A fall protection system comprising:
a first support element;
a second support element;
a third support element extending between the first and
second support elements and movably connected to the first and
second support elements; and
a harness connected to the third support element;
wherein the third support element comprises a single
tubular rigid member extending transversely between the first
and second support elements and a first cable stay assembly
attached to the tubular rigid member,
wherein the first cable stay assembly comprises a
spreader that protrudes from a midpoint of the single tubular
rigid member,

Appeal 2012-009781
Application 11/696,412

3
and wherein a terminal end of the spreader that is distal
from the single tubular rigid member is connected to a cable
stay that spans the length of the single tubular rigid member and
whose terminal ends are attached to opposing terminal ends of
the single tubular rigid member.
THE REJECTIONS
The Examiner has rejected (see Answer 5–8):
(i) claims 4, 5, 18, 24, and 25 under 35 U.S.C. § 102(b) as being
anticipated by Sorenson (US 3,379,439, issued Apr. 23, 1968);
(ii) claims 7 and 15 under 35 U.S.C. § 103(a) as being unpatentable
over Sorenson in view of Lickle (US 7,351,155 B2, issued Apr. 1, 2008);
(iii) claim 8 under 35 U.S.C. § 103(a) as being unpatentable over
Sorenson in view of Choate (US 6,779,630 B2, issued Aug. 24, 2004); and
(iv) claims 19–21 and 23 under 35 U.S.C. § 103(a) as being
unpatentable over Sorenson in view of Tadashi (US 3,294,252, issued Dec.
27, 1966).
ANALYSIS
Rejections (i)–(iii): Claims 4, 5, 7, 8, 15, 18, 24, and 25
Claims 5, 7, 8, 15, and 18 depend from independent claim 4 and claim
25 depends from independent claim 24. Appeal Br., Claims App.
In rejecting independent claims 4 and 24, the Examiner finds that
Sorenson discloses, inter alia, a third support element/tubular rigid member
16 and a line 28 “extending through the interior of the rigid tubular member”
16.1 Answer 5–6; see also Answer 9–10. In support of this finding, the
Examiner relies on Figure 1 of Sorenson for disclosing line 28 “extending

1 Sorenson refers to 16 as a carriage assembly and 28 as a cable. Sorenson,
col. 2, ll. 28–29 and 35–37.
App
App

throu
appe
spac
inter
that
rigid
Repl
Spec
tubu
tubu
their
re Pr
inter
wou
eal 2012-0
lication 11
gh an inte
ars that th
e within th
The rele
Figure 1
In conte
pretation o
Sorenson’
member”
y Br. 3–4.
ification a
lar membe
lar membe
During e
broadest r
ater, 415
pretation m
ld reach. I

09781
/696,412
rior of rig
e Examine
e four side
vant portio
depicts So
sting the re
f “interior
s cable 28
16, as rec
In suppor
nd conten
r [when it
r.” Id. at
xaminatio
easonable
F.2d 1393
ust be co
n re Cortr
id tubular
r construe
s of rectan
n of Soren
renson’s “
jection, A
of a tubul
does not e
ited in clai
t of this ar
ds that “it
] extends t
7 (citing S
n of a pate
constructi
, 1404–05
nsistent w
ight, 165 F
4
member” 1
s the claim
gular carr
son’s Fig
line” 28 a
ppellant a
ar membe
xtend “thr
ms 1 and 2
gument, A
is clear tha
hrough the
pec., para.
nt applica
on consist
(CCPA 19
ith the one
. 3d 1353
6. Id. at 6
ed “interi
iage assem
ure 1is rep
nd “tubula
rgues that
r” is unrea
ough an in
4. Appea
ppellant r
t a line ex
‘hollow i
32) (emph
tion, pend
ent with th
69). Furt
that those
, 1358 (Fe
. In doing
or” to inclu
bly 16.
roduced b
r rigid me
the Exami
sonably br
terior of th
l Br. 6–7;
efers to th
tends thro
nterior’ of
asis adde
ing claims
e specifica
hermore, t
skilled in
d. Cir. 199
so, it
de the
elow:
mber” 16.
ner’s
oad and
e tubular
see also
e
ugh a
the
d).
are given
tion. In
his
the art
9).

Appeal 2012-009781
Application 11/696,412

5
In reading the claimed “a line extending through an interior of the
tubular rigid member” in light of the Specification, a person of ordinary skill
in the art would understand that the line passes through the hollow interior of
the tubular member. Notably, the Specification provides that “tubular rigid
member 30 may further include a line (not shown) extending through an
interior of the tube.” Spec., para. 28 (emphasis added); see also Spec., para.
32 (providing that “line arrangement 60 may further include a line extending
through a hollow interior of the rigid member 30.”) Accordingly, we agree
with Appellant that the Examiner’s interpretation is unreasonably broad.
For the foregoing reason, we reverse the rejection of claim 4,
including its dependent claims 5, 7, 8, 15, and 18, and reverse the rejection
of claim 24, including its dependent claim 25. Furthermore, the rejections of
claims 7, 8, and 15, which depend from claim 4, as being unpatentable over
Sorenson in combination with Lickle and Choate, are reversed as well, in
that the Examiner does not rely on Lickle or Choate for teaching “a line
extending through an interior of the tubular rigid member.”

Rejection (iv): Claims 19–21 and 23
Appellant does not present arguments for the patentability of claims
20, 21, and 23 apart from their reliance on independent claim 19. See
Appeal. Br. 9–10; see also Reply Br. 4–5. Therefore, we select claim 19 as
the representative claim to decide the appeal of the rejection of claims 19–21
and 23, with claims 20, 21, and 23 standing or falling with claim 19. See
37 C.F.R. § 41.37(c)(1)(vii) (2011).
In rejecting claim 19, the Examiner finds that Sorenson discloses,
inter alia, first and second support elements 18 and a third support element
Appeal 2012-009781
Application 11/696,412

6
comprising a single tubular rigid member 16.2 Answer 5–6 and 7–8. The
Examiner relies on Tadashi, however, for teaching the claimed first cable
stay assembly 2 and spreader and determines that it would have been
obvious to provide Sorenson’s carriage assembly 16 with Tadashi’s cable
stay assembly 2 “for reinforcing” carriage 16. Id. at 8 (citing Tadashi, Figs.
3c and 4a.)
In contesting the rejection, Appellant argues that Sorenson’s carriage
assembly 16 cannot be construed as the claimed “single tubular member”
because Sorenson’s assembly 16 “is in the form of a (continuous,
uninterrupted) closed curve, so by definition the single tubular member does
not have a beginning or an end.” Appeal Br. 9 (emphasis added). In
particular, Appellant argues that “Sorenson’s putative single tubular member
[carriage assembly 16] does not have terminal ends, as would be required by
claim 19.” Id. Appellant further argues that because Sorenson’s carriage
assembly 16 “has no beginning or end, it has no midpoint,” and cannot meet
the claim limitation of “a spreader that protrudes from a midpoint of the
single tubular rigid member.” See id. In extending this line of reasoning,
Appellant further argues that the claimed cable stay cannot span the length
of “single tubular member” 16, as recited in claim 19, because the “cable
stay would have to span the entire length of all four [rectangular] segments”
of Sorenson’s carriage assembly 16. Id. at 10.
Appellant’s argument that because carriage assembly 16 is rectangular
in shape, it does not have terminal ends, a midpoint, or a length that does not
otherwise span the entire length of all four sides of the rectangle is not

2 Sorenson refers to elements 18 as a pair of cables. Sorenson, col. 2, ll. 21–
23.
Appeal 2012-009781
Application 11/696,412

7
persuasive. As the Examiner correctly finds, Sorenson’s “rigid tubular
member” 16 has two terminal ends: one on the left side of Fig. 1
(underneath left cable 18) and one on the right side of Fig. 1 (underneath
right cable 18). Answer 14. In other words, simply because Sorenson’s
carriage assembly 16 is a “closed curve” does not preclude a finding that it
has two ends, a midpoint, and a corresponding length as measured between
the two ends.
For the foregoing reasons, we sustain the rejection of claim 19,
including claims 20, 21, and 23, which stand or fall with claim 19, as being
unpatentable under 35 U.S.C. § 103(a) over Sorenson and Tadashi.

SUMMARY
The Examiner’s decision to reject claims 4, 5, 18, 24, and 25 under
35 U.S.C. § 102(b) as being anticipated by Sorenson is reversed.
The Examiner’s decision to reject claims 7 and 15 under 35 U.S.C.
§ 103(a) as being unpatentable over Sorenson in view of Lickle is reversed.
The Examiner’s decision to reject claim 8 under 35 U.S.C. § 103(a) as
being unpatentable over Sorenson in view of Choate is reversed.
The Examiner’s decision to reject claims 19–21 and 23 under
35U.S.C. § 103(a) as being unpatentable over Sorenson in view of Tadashi is
affirmed.
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

Klh