Ex Parte Brown

Board of Patent Appeals and Interferences

Feb 25, 2005

10314766 (B.P.A.I. Feb. 25, 2005)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte Robert C. Brown
__________
Appeal No. 2005-0263
Application No. 10/314,766
__________
ON BRIEF
__________
Before GARRIS, WARREN, and PAWLIKOWSKI, Administrative Patent
Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal which involves claims 1 and
4-11.
The subject matter on appeal relates to a soap bar element
for minimizing the amount of soap remaining on the bar after a
few uses comprising a non-soap central core and a soap shell
surrounding the core wherein the core occupies at least 75 volume
Appeal No. 2005-0263
Application No. 10/314,766
2
percent of the bar element. This appealed subject matter is
adequately illustrated by independent claim 1 which reads as
follows:
1. An economical soap bar element for minimizing the amount
of soap remaining on the bar after a few uses, comprising a non-
soap central core and a soap shell surrounding said non-soap core
in at least two dimensions, wherein said non-soap core occupies
at least about 75 volume percent of said bar element.
The references set forth below are relied upon by the
examiner as evidence of obviousness:
Allen 3,796,665 Mar. 12, 1974
Hadley et al. (Hadley) 3,969,256 Jul. 13, 1976
Di Giovanna 4,308,157 Dec. 29, 1981
Claims 1 and 4-9 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over Hadley.
Claims 1 and 4-11 are rejected under 35 U.S.C. § 103(a) as
being unpatentable over either Allen or Di Giovanna.
For a complete exposition of the opposing viewpoints
expressed by the appellant and by the examiner concerning the
above noted rejections, we refer to the brief and to the answer
as well as the Office action mailed January 20, 2004.
As a preliminary matter, we observe that, in the “Grouping
of Claims” section of the brief (i.e., see pages 4-5), the
appellant indicates that the claims do not stand or fall
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Application No. 10/314,766
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together. However, in the “Argument” section of the brief (i.e.,
see pages 5-13), the appellant has not presented any arguments
reasonably specific to any of the dependent claims 4-11. In this
regard, it is important to appreciate that, in order to have
commonly rejected claims separately considered, the claims not
only must be grouped separately but also must be argued
separately. See 37 CFR § 41.37(c)(1)(vii)(September 2004);
formerly 37 CFR § 1.192(c)(7)(2003). Also see Ex parte Schier,
21 USPQ2d 1016, 1018 (Bd. Pat. App. & Int.). Because these
dependent claims have not been argued separately on this appeal,
they will stand or fall with independent claim 1 which is the
sole independent claim before us. See In re Dance, 160 F.3d
1339, 1340, n.2, 48 USPQ2d 1635, 1636, n. 2 (Fed. Cir. 1998).
OPINION
For the reasons which follow, we will sustain each of the
rejections advanced on this appeal.
As correctly observed by the examiner (and not disputed by
the appellant), appealed independent claim 1 distinguishes from
each of Hadley, Allen and Di Giovanna in that none of these
references expressly teaches the here claimed limitation “wherein
said non-soap core occupies at least about 75 volume percent of
said bar element.” More particularly, these references contain
Appeal No. 2005-0263
Application No. 10/314,766
1 Specifically, in the January 20, 2004 Office action, the
examiner has cited In re Seid, 161 F.2d 229, 73 USPQ 431 (CCPA
1947) for the proposition that matters relating to ornamentation
only which have no mechanical function cannot be relied upon to
patentably distinguish a claimed invention from the prior art.
This citation quite plainly is inapposite to the case before us
since the appealed claim 1 feature under consideration
unquestionably performs a function and therefore does not relate
to ornamentation only.
4
no express teaching whatsoever regarding the core size or volume
of the soap bar elements respectively disclosed therein.
Nevertheless, the examiner concludes that it would have been
obvious for one with ordinary skill in this art to size the core
in each of Hadley, Allen and Di Giovanna such that it occupies at
least about 75 volume percent of the bar element as required by
the independent claim on appeal.
The examiner has presented a variety of rationales in
support of this obviousness conclusion, some of which are of
questionable merit.1 Regardless, we consider as well taken the
examiner’s fundamental position that the applied reference
disclosures would have suggested a range of core sizes including
the here claimed size of at least 75 volume percent. For
example, as correctly indicated by the examiner on page 6 of the
answer, Figures 2 and 3 of Allen cumulatively disclose a core
size that either is within, or at least would have suggested, the
here claimed range of at least 75 volume percent. In re Meng,
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Application No. 10/314,766
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492 F.2d 843, 847, 191 USPQ 94, 97 (CCPA 1974)(a drawing is
available as a reference for all that it teaches a person of
ordinary skill in the art). Moreover, it is appropriate to
regard the aforementioned absence of an express core size
teaching in these references as supporting an obviousness
conclusion. This is because this absence of express teaching
evinces that the determination of suitable core sizes would have
been within the capabilities of those with ordinary skill in this
art.
In this last mentioned regard, the appellant argues that the
applied references contain no suggestion of core sizes within the
here claimed range because his claimed invention is directed to
problems and characteristics which are different from those of
the applied prior art. We cannot agree for a number of reasons.
First, this argument is contrary to the above discussed drawing
disclosure of Allen. Additionally, we are unpersuaded by the
appellant’s argument because we disagree with the proposition on
which it is based. That is, we do not agree with the appellant’s
position that the here claimed soap bar element involves problems
and characteristics which are incompatible with the soap bar
elements of the applied prior art.
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For example, the subject specification discloses that the
appellant’s soap bar element is economical by reducing residual
soap waste and by using an inexpensive non-soap core (e.g., see
lines 5-11 on page 1, lines 3-9 on page 3 and lines 1-8 on page
6). Corresponding objectives are disclosed in the applied
references. By way of exemplification, the Abstract and lines
16-23 in column 1 of Hadley disclose reducing soap waste, and the
use of inexpensive core materials is disclosed by Allen (see
lines 4-9 in column 2) as well as by Di Giovanna (see lines 2-10
in column 2). The fact that the applied references disclose
objectives corresponding to those disclosed by the appellant
supports the examiner’s conclusion that the respective reference
disclosures would have suggested soap bar elements having core
sizes within the appellant’s claimed range.
Finally, the appellant argues that his nonobviousness
position is supported by additional considerations such as a long
felt but unsatisfied need (e.g., see pages 10-12 of the brief).
However, the record before us contains no probative evidence of
such additional considerations as a long felt but unsatisfied
need vis-à-vis reducing wastage of soap bars used in hotels. On
the other hand, the soap bar of Allen is explicitly disclosed as
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being for use in a hotel (see Figure 1) and therefore appears to
have satisfied the need referred to by the appellant.
In light of the foregoing, it is our ultimate determination
that the reference evidence adduced by the examiner establishes a
prima facie case of obviousness which the appellant has failed to
successfully rebut with argument or evidence of nonobviousness.
See In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992). Accordingly, we hereby sustain the examiner’s
section 103 rejections of claims 1 and 4-9 as being unpatentable
over Hadley and of claims 1 and 4-11 as being unpatentable over
either Allen or Di Giovanna.
The decision of the examiner is affirmed.
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Application No. 10/314,766
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
Bradley R. Garris )
Administrative Patent Judge )
)
)
)
Charles A. Warren ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
Beverly A. Pawlikowski )
Administrative Patent Judge )
Appeal No. 2005-0263
Application No. 10/314,766
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Thomas Schneck
Schneck & McHugh
P.O. Box 2-E
San Jose, CA 95109-0005
BRG:tdl