Appeal No. 98-1419
Application 08/437,543
The subject matter on appeal concerns a ladder assembly, a method relating thereto, and a
railroad crossing and ladder assembly. The appealed claims are reproduced in the appendix of
appellant's brief.
The prior art applied in the final rejection is:
Anderson 19,659 Jan. 25, 1890
(British Patent)
The admitted prior art in appellant's application, i.e., Figures 1 and 2, page 1, lines 6 to 15, and page 5,
line 26 to page 6, line 12 (APA).
The appealed claims stand finally rejected on the following grounds:
(1) Claims 1 to 14 and 18 to 20, for failure to comply with 35 U.S.C. § 112, second paragraph;
(2) Claims 1 to 20, unpatentable over APA in view of Anderson, under 35 U.S.C. § 103.
Rejection (1)
The test for compliance with the second paragraph of 35 U.S.C. § 112, as stated in Miles
Laboratories, Inc. v. Shandon Inc., 997 F.2d 870, 875, 27 USPQ2d 1123, 1126 (Fed. Cir. 1993), is:
whether one skilled in the art would understand the bounds of the claim when read in
light of the specification. If the claims read in light of the specification reasonably
apprise those skilled in the art of the scope of the invention, § 112 demands no more.
See also In re Merat, 519 F.2d 1390, 1396, 186 USPQ 471, 476 (CCPA 1975):
The question under § 112, second paragraph, is whether the claim language, when read
by a person of ordinary skill in the art in light of the specification, describes
the subject matter with sufficient precision that the bounds of the claimed subject matter
2
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