Appeal No. 2005-2435
Application No. 10/407,498
In light of the foregoing, we hereby reverse the examiner's
§ 112, second paragraph, rejection of claim 13.
We also hereby reverse the examiner's § 102 rejection of
claims 1-3, 5, 7-10 and 13-20 as being anticipated by Allred.
As correctly argued by the appellant, Allred contains no teaching
that his safety device includes an arm and a holding mechanism
for performing the attachment functions defined by independent
claim 1 as well as the other independent claims on appeal. In
response to this argument, the examiner makes the following
statements in the paragraph bridging pages 5-6 of the answer:
As concerns remarks pertaining to the use of
the ladder attachment of Allred, the examiner takes
the position that the "use" of a device is not given
patentable weight within an "apparatus" claim, and since
Allred clearly sets forth an "arm" having two ends with a
flexible portion therebetween, and holding mechanism that
can be used to attach to any kind of support or building,
the reference and rejections (as advanced above) appear
to the examiner to be appropriate.
It is well established, of course, that the patentability of
an apparatus claim is based on the apparatus rather than the manner
in which it is used. For example, see In re Casey, 370 F.2d 576,
579-80, 152 USPQ 235, 238 (CCPA 1967). Nevertheless, to anticipate
an apparatus claim, the prior art apparatus must not only possess
the claimed structure but also must possess at least the capability
of performing the functions required by the apparatus claim, and it
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