Ex Parte Black

Board of Patent Appeals and Interferences

Nov 28, 2007

11162263 (B.P.A.I. Nov. 28, 2007)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte HENRY J. BLACK
____________________

Appeal 2007-1345
Application 11/162,263
Technology Center 3600
____________________

Decided: November 28, 2007
____________________

Before: FRED E. McKELVEY, Senior Administrative Patent Judge, JENNIFER
D. BAHR, and JOSEPH A. FISCHETTI, Administrative Patent Judges.

FISCHETTI, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE

The above-identified application is before the Board to decide an appeal
from a final rejection of claims 1-4, 7, 8, 14-20, all the claims remaining in the
application.
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Application 11/162,263

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The application on appeal is a continuation-in-part (CIP) of parent
Application 10/906,855 and claims an effective filing date of March 9, 2005 based
on the filing date of the parent application.
This opinion is written as a follow-up to our earlier INTERLOCUTORY
ORDER issued August 28, 2007. Appellant has complied with the requirements of
that ORDER by submitting: (1) in accordance with 37 C.F.R. § 41.37 (2006) in
combination with 37 C.F.R. § 41.67(c)(1)(v) (2007) a reproduction of claims 17-20
with reference numerals following each recited means-plus-function phrase
referenced to page and line in brackets within the reproduced claim; and (2) a
discussion why claim 17, once clarified as set forth above, should not be
considered anticipated by or rendered obvious by U.S. Patent 5,507,414 issued to
Ong.

SUMMARY OF DECISION
We AFFIRM-IN-PART.

THE INVENTION
According to the Specification, the invention relates to the area of soap
dishes or receptacles for holding a bar of wet soap with a slippery surface and a
dripping residue (Specification 1: 4-5).
Claims 1 and 7, reproduced below, are representative of the subject matter
on appeal.

Claim 1. A soap receptacle with projecting ribs for holding a bar of soap above,
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and spaced from, a top planar surface and including a pattern of drain holes
communicating from the top planar surface through a top part of the receptacle into
an self draining interior reservoir, comprising,

a receptacle comprising a top part, a bottom part, and side parts, joined with said
bottom part and said top part;

said receptacle comprising an interior reservoir enclosed by said side parts and said
bottom part and at least partially enclosed by said top part;

said top part having a top planar surface and an opposed bottom surface and an
exposed edge between said top planar surface and said opposed bottom surface;

an opening to said interior reservoir enclosed by said top part exposed edge and
said side parts;

a plurality of projecting ribs mounted on said top planar surface;

said projecting ribs having contact areas displaced from said top planar surface and
extending in an orthogonal direction outside said receptacle;

said projecting ribs defining a space between said contact areas and said top planar
surface, for supporting soap, displaced from said top planar surface by said defined
space;

said top part comprising a plurality of drain holes communicating between said top
planar surface and said interior reservoir, to drain soap residue from said top planar
surface into said interior reservoir;

at least one of said side parts, having an indentation extending from the level of
said top part opposed bottom surface to a lower level within said interior reservoir,
for draining said interior reservoir to said lower level.

Claim 17. A soap receptacle with projecting ribs for holding a bar of soap above,
and spaced from, a top planar surface and including at least one drain hole
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communicating from the top planar surface through a top part of the receptacle into
a self draining interior reservoir, comprising,

first means for a receptacle;

said first means comprising second means for supporting a bar of soap at a first
level on top of said first means;

said first means comprising third means within said first means, for an enclosed
reservoir for containing within said receptacle, soap residue from said second
means;

said second means comprising fourth means for draining said soap residue from
said second means into said third means;

said first means comprising a fifth means for a first opening into said third means
extending from said first level to a second level within said third means.

THE REJECTION
The Examiner relies upon the following as evidence of unpatentability:
Gerbec US 2003/007403 A1 Apr. 17, 2003

The following rejections are before us for review.
Claims 17-20 stand rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the written description requirement.
Claims 1-4, 7, 8, and 17-20 stand 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 applicant regards as the invention.
Claims 1-4, 7, 8, and 14-20 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Gerbec.
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ANALYSIS
We begin by addressing the 35 U.S.C. § 112, first and second paragraph
rejections of claims 17-20. The Examiner has rejected claims 17-20 under 35
U.S.C. § 112, first paragraph stating “[t]he specification does not adequately
describe the term ‘means’ and the addition of such is considered new matter and
must be cancelled from the claims” (Final Rejection p.3). The 35 U.S.C. § 112
second paragraph rejection was made against claims 17-20 based on the term
“means” being “recited frequently and it is unclear as to which elements the term
may be referring” (Final Rejection p.3).
We find that the Specification as originally filed contained no reference to
any of the seven means identifiers which are recited in claims 17-20. Therefore,
the Specification as originally filed does not provide sufficient written description
to adequately describe what is meant by the seven means plus function phrases
recited in claims 17-20 as required by 35 U.S.C. § 112, first paragraph.
35 U.S.C. § 112, second and sixth paragraphs require that Appellant’s
Specification describe what structure corresponds to the means plus function
language used in claims 17-20 in order to particularly point out and distinctly claim
the subject matter which applicant regards as the invention. Without this there is
confusion as to what the claims cover, as exists here. For example, claim 17
recites a fifth means having the function of “a first opening into said third means
extending from said first level to a second level within said third means.” We have
only Appellant’s Reply to the Interlocutory Order as a guide to determine
corresponding structure for the fifth means plus function language used in claim
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17. But, even with the aid of this description, confusion still exists over what is
being claimed.
For example, Claim 17 recites first means for a receptacle. The
Specification describes the receptacle 11 as a box-like structure with sides 13a,
13b, 13c, and 13d (Specification 7:[Para 23]). Thus, the receptacle 11 defines a
reservoir which contains soap residue. However, claim 17 goes on to recite a third
means for an enclosed reservoir for containing within said receptacle, soap residue
from said second means. We find this confusing because is not the reservoir
already defined by the receptacle as the first means and is it not already enclosed in
five sides by its box-like shape, and on the top side by the second means. Further,
the first means is recited as "comprising a fifth means for a first opening." It is not
clear what a "means for a first opening" is or how, if at all, it differs from "a first
opening." For example, does the "fifth means" actually refer to structure in which
a first opening is formed? Appellant's Reply to Order is unavailing on this point.
For reasons such as these, we do not find the use of the term “means” in claims 17-
20 to be definite because it is unclear what is being distinctly claimed. We
therefore affirm both 35 U.S.C. § 112 first and second paragraph rejections of
claims 17-20. “If an applicant fails to set forth an adequate disclosure, the
applicant has in effect failed to particularly point out and distinctly claim the
invention as required by the second paragraph of section 112.” In re Donaldson
Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994).
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Claims 1-4, 7, 8 stand rejected under 35 U.S.C. § 112, second paragraph
because according to the Examiner the term "the level" in claim 1 has insufficient
antecedent basis (Final Rejection 2/16/06, p.5).
We will not sustain the rejection of claims 1-4, 7, and 8 under 35 U.S.C.
§ 112, first paragraph because the phrase “the level of said top part opposed bottom
surface” is sufficiently definite. Those skilled in the art would understand that the
bottom surface of the top part being shown as flat exists in a plane or at a level
coincident with the bottom surface and thus it is understood that it is the level of
the bottom surface of the top part which is being referenced. See Orthokinetics,
Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986).
We will not sustain the rejection of claims 1-4, 7, 8, and 14-20 under 35
U.S.C. § 102(b) as being anticipated by Gerbec.
The Examiner found that Gerbec “discloses a receptacle (10) having a top
part (3), a bottom part (4) and side parts joined with the bottom part and the top
part, the receptacle/third means having an interior reservoir/first reservoir means
enclosed by the side parts and the bottom part (4) …” (Final Rejection 3/29/06
p.4). However, independent claims 1, 14, and 17 require the receptacle be
enclosed to define a reservoir which, according to claims 1 and 14, is enclosed by a
top part, a bottom part, and side parts, and according to claim 17, by the third
means for containing within the receptacle, soap residue from said second means.
We do not find that the fusion implant housing 10 of Gerbec is enclosed to
define a reservoir as required by the claims. Webster’s Collegiate Dictionary
(Tenth Ed. 1996) defines “enclose,” inter alia, as CONFINE. In Gerbec, the side
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parts 87 and 89 as shown in Figure 2 have ports or openings 110 which
purposefully communicate between the exterior of the housing 10 and the
compartment 8 of the implant in order to facilitate bone growth therewithin
(Gerbec, p.4, [0052]). Therefore, the implant housing 10 of Gerbec is not enclosed
by its side walls as required by claim 1, nor in Gerbec is there a means for
containing residue in a reservoir as required by claim 17 because the openings 110
in the walls 87 and 89 of the housing 10 would not permit the soap residue to be
contained in the compartment 8, but rather undesirably to flow out.
Appellant has complied with the Order and responded to our inquiry to the
Ong reference and its impact on claims 17-20. But since the rejection of claims
17-20 has been sustained under 35 U.S.C. § 112, first and second paragraphs, we
need not address the applicability of this reference to those claims.

CONCLUSIONS OF LAW
We conclude:
We sustain the Examiner’s rejection of claims 17-20 under 35 U.S.C. § 112,
first and second paragraphs.
We cannot sustain the rejection of claims 1-4, 7, 8, 14-16 under 35 U.S.C.
§ 112, Second Paragraph.
We cannot sustain the rejection of claims 1-4, 7, 8 and 14-20 under 35
U.S.C. § 102(b) as being anticipated by Gerbec.
DECISION
The decision of the Examiner to reject claims 17-20 is affirmed.
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The decision of the Examiner to reject claims 1-4, 7, 8, 14-16 is reversed.
This is a final agency decision.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).

AFFIRMED-IN-PART

hh

JOEL I ROSENBLATT
445 11TH AVENUE
INDIALANTIC, FL 32903