Appeal No. 98-1419
Application 08/437,543
cooperative relationship between said second ladder and the other positively set forth
elements of the claim. Further, note that sliding and pivotal movement of one element
with respect to another element in a claim does not positively set forth nor necessarily
infer that said one element is structurally attached to said another element.
We do not agree with the examiner, because in our view claim 18 satisfies the test for
compliance with § 112, second paragraph, set forth in Miles Laboratories and In re Merat, supra.
Reading this claim in light of the disclosure, we consider that the bounds of the claim would be
understood by one of ordinary skill in the art. The fact that the claim does not specify where or on
what the second ladder is mounted does not render the claim indefinite, but simply means that the claim
is broad enough to read on any mounting which will permit the second ladder to slide and pivot in the
manner recited. As appellant states on page 6 of his brief, "[m]ere breath does not equate to3
indefiniteness (see In re Miller, 441 F.2d 689, 693, 169 USPQ 597, 599-600 (CCPA 1971))."
Rejection (1) will therefore not be sustained.
Rejection (2)
We are at somewhat of a loss to understand the basis of this rejection. The examiner states on
page 6 of the answer that element(s) A of Anderson are "a first ladder", which they clearly are not, and
then states on page 13 that he has relied on the teaching of ladder B "which is pivotally and slidably
3We note that since claim 18 has not been rejected under the written description requirement
of § 112, first paragraph, the examiner evidently does not consider it to be broader than the supporting
disclosure. Cf. Gentry Gallery Inc. v. Berkline Corp., 134 F.3d 1473, 1479, 45 USPQ2d 1498, 1503
(Fed. Cir. 1998).
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