Appeal No. 2005-2435
Application No. 10/407,498
alone or in combination with a "ladder." According to the
examiner, this lack of clarity arises because claim 13 begins
with the phrase "The safety device of Claim 1" (i.e., indicating a
"safety device" alone) whereas the body of the claim positively
recites "the ladder" (i.e., indicating the combination of a
"safety device" and a "ladder"). The appellant, on the other hand,
unambiguously states repeatedly that claim 13 is directed to the
subcombination of a "safety device" and that the claim recitation
concerning "the ladder ..." merely defines the environment with
which the safety device is configured to interact.
Consistent with the appellant's above noted explanation,
one having ordinary skill in this art would consider the language
of claim 13 as defining a "safety device" alone. The examiner's
opposing viewpoint appears to be based solely on his implicit
presumption that positive recitation of an element such as "the
ladder" in claim 13 necessarily indicates that the element is a
part of the claimed subject matter. We are aware of no authority
for such a presumption, and the examiner cites none. To the
contrary, the non-claimed environment was positively recited in
the claims of Orthokentics v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1 USPQ2d 1081, and these claims were held to comply with
the second paragraph requirements of § 112.
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