Ex parte VROLYKS

Board of Patent Appeals and Interferences

Mar 10, 1998

08562471 (B.P.A.I. Mar. 10, 1998)

Application for patent filed November 24, 1995. According to1
appellant, this application is a continuation of Application no. 08/380,492,
filed January 30, 1995.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today
(1) was not written for publication in a law journal and
(2) is not binding precedent of the Board.
Paper No. 8
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte JAN W. VROLYKS
__________
Appeal No. 97-1079
Application 08/562,4711
__________
ON BRIEF
__________
Before, COHEN, MEISTER and McQUADE, Administrative Patent Judges.
MEISTER, Administrative Patent Judge.
DECISION ON APPEAL
Jan W. Vrolyks (the appellant) appeals from the final
rejection of claims 1, 2, 4, 5, 7 and 8, the only claims
remaining in the application.
Appeal No. 97-1079
Application 08/562,471
2
We REVERSE and, pursuant to our authority under the
provisions of 37 CFR § 1.196(b), enter a new rejection of the
appealed claims under 35 U.S.C. § 112, second paragraph.
The appellant’s invention pertains to a ladder safety
attachment. Independent claim 1 is further illustrative of the
appealed subject matter and a copy thereof may be found in the
appendix to the appellant’s brief.
The references relied on by the examiner are:
Lamp 467,468 Jan. 19, 1892
Schwarting 619,235 Feb. 07, 1899
Kummerlin 4,359,138 Nov. 16, 1982
Claims 1, 2, 4, 5, 7 and 8 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Kummerlin in view of either Lamp
or Schwarting. Normally claims which fail to comply with the
second paragraph of § 112 will not be analyzed as to whether they
are patentable over the prior art since to do so would of
necessity require speculation with regard to the metes and bounds
of the claimed subject matter. See In re Steele, 305 F.2d 859,
862-63, 134 USPQ 292, 295-96 (CCPA 1962) and In re Wilson, 424
F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA 1970). Nevertheless, in
this instance, we are able to reach the question of patentability
Appeal No. 97-1079
Application 08/562,471
3
over the prior art based on those portions of the claims which
are understandable.
It is the examiner’s position that:
Kummerlin (7) shows the claimed ladder and attachment
with the exception of the claimed foot pad section.
Both Lamp and Schwarting show foot pad sections as
claimed to prevent slipping. It would have been
obvious to one of ordinary skill in the art at the time
the invention was made to modify the tips of
Kummerlin’s legs to comprise pad sections as claimed in
lieu of his plates (114') to prevent slipping of his
ladder. [Answer, page 3.]
In support of this position the answer states:
The examiner’s [sic, examiner] notes that while
Kummerlin does not show or state that his u-shape[d]
frame (112) pivots between a forwardly and rearwardly
position, the structural pivot connection (see fig. 8)
between support frame (103) and u-shaped frame (112)
[sic, (112) allows for such pivoting. Kummerlin’s
support frame (103) lies in a first plane defined by
and from the outer edge of hook (104) to the outer edge
of arms (103'), and the pivot axis of the u-shape[d]
frame is located in arms (103'), and the pivot axis of
the u-shape[d] frame is located in the arms (103'),
therefore, the pivot axis lies both within the plane of
the u-shaped frame and the plane of the support frame.
[Page 4.]
We will not support the examiner’s position. Initially, we
cannot agree with the examiner that Kummerlin in Fig. 8 teaches
that the U-shaped frame 112 is “pivotally mounted” on the
supporting frame 103' so as to be “pivotable about a pivot axis
relative to said supporting frame” as expressly required by
Appeal No. 97-1079
Application 08/562,471
We observe that in Fig. 5 the portion of the member 108 which is2
illustrated as crossing the side rails 74, 76 of the ladder with hidden or
dashed lines should, instead, be illustrated with solid lines. We also
observe that in Fig. 6 that portion of the U-shaped member which is
illustrated as crossing the side rail 76 of the ladder with solid lines
should, instead, be illustrated with hidden or dashed lines.
4
independent claim 1. Terms in a claim should be interpreted in a
manner consistent with the specification and construed as those
skilled in the art would construe them (see In re Bond, 910 F.2d
831, 833, 15 USPQ2d 1566, 1567 (Fed. Cir. 1990), Specialty
Composites v. Cabot Corp., 845 F.2d 981, 986, 6 USPQ2d 1601, 1604
(Fed. Cir. 1988) and In re Sneed, 710 F.2d 1544, 1548, 218 USPQ
385, 388 (Fed. Cir. 1983)). Here, the appellant's specification
teaches that the supporting frame is provided with a hollow tube
82 and that the U-shaped frame is provided with a main central
support tube 108 that is coaxially received within the hollow
tube 82, which arrangement allows “pivoting of the main support
108 [and hence the U-shaped frame] from the dotted line position
to the solid line position shown in Figure 6" (page 15, lines 20
and 21). In Kummerlin, however, the U-shaped frame 112 is2
mounted between spaced parallel arms 103'. Both the central
portion of the U-shaped frame and the spaced parallel arms are
provided with spaced apertures and a pin 121 is provided which
Appeal No. 97-1079
Application 08/562,471
5
may be inserted through the apertures in the spaced parallel arms
and the central portion of the U-shaped frame in order to retain
the frame in a desired position. The U-shaped frame may be
angularly adjusted by (1) removing the pin from the apparatus,
(2) manually grasping the frame, (3) manually supporting (at
least against lateral movement as depicted in Fig. 8) and
simultaneously angularly adjusting the position of the frame and
(4) reinserting the pin through either the same or different
apertures in the arms and through different apertures in the
central portion of the U-shaped frame. It is thus readily
apparent that in the appellant’s device a clearly defined pivot
axis (that is always constrained to be positioned at a fixed
location) is provided by the coaxial members 82 and 108 whereas
in Kummerlin any axis of rotation is at least in part defined by
the hand of the hand of a user (and thus is not necessarily
always constrained to be positioned at a fixed location). In our
view the artisan, consistent with the appellant’s specification,
would not construe the arrangement of Kummerlin to fairly teach a
U-shaped frame that is “pivotally mounted” on a supporting frame
so as to be “pivotable about a pivot axis relative to said
supporting frame” as set forth in independent claim 1.
Appeal No. 97-1079
Application 08/562,471
6
Even assuming that Kummerlin teaches a pivotal mounting
and pivot axis as claimed, the axis would not be located “within
both said first plane and second plane” as claimed. That is, the
supporting frame is defined by independent claim 1 as being
located in the first plane that in turn is defined as being
parallel to the longitudinal plane of the ladder. Consistent
with the appellant’s specification, one of ordinary skill in this
art would interpret the first plane to pass through the members
106, 107 of Kummerlin, which plane is clearly offset from the
location where the U-shaped frame 112 is angularly adjusted (see
Fig. 8).
Although Kummerlin states that the embodiment of Figs. 7 and
8 “can be used as desired as wall spacer, ladder stiffener or
ground leveling base,” we find nothing in the combined teachings
of Kummerlin and either Lamp or Schwarting which would fairly
suggest the placement on the U-shaped supporting frame 112 of
Kummerlin an “impaling device” which is “available to penetrate a
vertical wall surface” as set forth in independent claim 1.
While both Lamp and Schwarting teach impaling devices, such
devices are on the end of crutches which engage the ground.
In view of the foregoing, we will not sustain the rejection
Appeal No. 97-1079
Application 08/562,471
7
of claims 1, 2, 4, 5, 7 and 8 under 35 U.S.C. § 103 as being
unpatentable over Kummerlin in view of either Lamp or Schwarting.
Under the provisions of 37 CFR § 1.196(b) we make the
following new rejection.
Claims 1, 2, 4, 5, 7 and 8 are rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite for failing to
particularly point out and distinctly claim the subject matter
which the appellant regards as the invention. The purpose of the
second paragraph of § 112 is to provide those who would endeavor,
in future enterprises, to approach the area circumscribed by the
claims of a patent, with adequate notice demanded by due process
of law, so that they may more readily and accurately determine
the boundaries of protection involved and evaluate the
possibility of infringement and dominance. In re Hammack, 427
F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970). Moreover, in
order to satisfy the requirements of the second paragraph of
§ 112, a claim must accurately define the invention in the
technical sense. See In re Knowlton, 481 F.2d 1357, 1366, 178
USPQ 486, 492-93 (CCPA 1973). In addition, in determining the
definitness of a claim, the terminology employed therein may not
be read apart from and independent of the supporting disclosure
Appeal No. 97-1079
Application 08/562,471
8
on which it is based. See In re Cohn, 438 F.2d 989, 993, 169
USPQ 95, 98 (CCPA 1971).
Applying these principles to the present case, we are of the
opinion that the recitations in independent claim 1 of (1) the
impaling device “being locatable in either an extended position
or a retracted position” and (2) “each foot pad section being
retractable locating of its respective said impaling device”
introduce uncertainty into the claim which would preclude one
skilled in the art from determining the metes and bounds of the
claimed subject matter. As to limitation (1), the appellant’s
impaling device 154 is not “locatable” in either an extended or
retracted position as set forth. Instead, it is the sleeve 152
and the attached foot pad 166 which are extended (and either
locked in the extended position or yieldingly maintained in the
extended position by the bias of spring 162) and retracted so as
to either cover or uncover the stationary impaling device 154.
Thus, not only does this limitation fail to accurately define the
invention in the technical sense, but the language thereof, when
read it light of the appellant’s own disclosure, results in an
inexplicable inconsistency that renders independent claim 1
indefinite. As to limitation (2), while it is clear that each
Appeal No. 97-1079
Application 08/562,471
9
foot pad section 166 extends and retracts (by virtue of the fact
that it is mounted on a sleeve 152) so as to cover and uncover
empaling device 154, the meaning of “retractable locating” in the
context of independent claim 1 is totally unclear.
In summary:
The rejection of claims 1, 2, 4, 5, 7 and 8 under 35 U.S.C.
§ 103 is reversed.
A new rejection of claims 1, 2, 4, 5, 7 and 8 under 35
U.S.C. § 112, second paragraph, has been made.
This decision contains a new ground of rejection pursuant to
37 CFR § 1.196(b)(amended effective Dec. 1, 1997, by final rule
notice, 62 Fed. Reg. 53,131, 53,197 (Oct. 10, 1997), 1203 Off.
Gaz. Pat. & Trademark Office 63, 122 (Oct. 21, 1997)). 37 CFR §
1.196(b) provides that, “A new ground of rejection shall not be
considered final for purposes of judicial review.”
37 CFR § 1.196(b) also provides that the appellant, WITHIN
TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new ground of
rejection to avoid termination of proceedings (§ 1.197(c)) as to
the rejected claims:
(1) Submit an appropriate amendment of the claims
so rejected or a showing of facts relating to the
Appeal No. 97-1079
Application 08/562,471
-10-
claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the
application will be remanded to the examiner. . . .
(2) Request that the application be reheard under
§ 1.197(b) by the Board of Patent Appeals and
Interferences upon the same record. . . .
No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
REVERSED
37 CFR § 1.196(b)
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
JAMES M. MEISTER ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
Appeal No. 97-1079
Application 08/562,471
-11-
Jack C. Munro
28720 Roadside Drive
Suite 225
Agoura Hills, CA 91301