Ex Parte BlackDownload PDFBoard of Patent Appeals and InterferencesNov 28, 200711162263 (B.P.A.I. Nov. 28, 2007) Copy Citation 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. Appeal 2007-1345 Application 11/162,263 2 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, Appeal 2007-1345 Application 11/162,263 3 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 Appeal 2007-1345 Application 11/162,263 4 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. Appeal 2007-1345 Application 11/162,263 5 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 Appeal 2007-1345 Application 11/162,263 6 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). Appeal 2007-1345 Application 11/162,263 7 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 Appeal 2007-1345 Application 11/162,263 8 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. Appeal 2007-1345 Application 11/162,263 9 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 Copy with citationCopy as parenthetical citation