Appeal No. 1997-0043
Application 08/071,596
removably fitted within said bar inner opening” in a manner to “complete said continuous outer wall,”
wherein the “bar and . . . insert may be separated without destruction of either shape” (emphasis
added). Thus, the bar and the insert would each have a separate surface such that when these shapes
are removably fitted together, such that they can be separated without destruction, that is, can be fitted
together, separated and refitted together, they form the substantially continuous outer surface of the
claimed solid system.3
In comparing the claimed solid system encompassed by claim 1 with the Joshi et al., we find
that, contrary to the examiner’s position (answer, e.g., pages 4-5, 7-8 and 9-10), the solid bar
disclosed by the reference does not contain separate shapes that are removably fitted together as
specified for the claimed solid in claim 1. Indeed, as pointed out by appellants in the principal brief,
Joshi et al. teaches that the disclosed dual composition bar is formed of two different
3 We note that the issue of whether claim 1 satisfies the requirements of 35 U.S.C. § 112, second
paragraph, is raised by the word “continuous,” appearing in the phrase “at least two cooperative shapes
cooperating to form a solid having a continuous outer wall” in the preamble and in the phrase “said insert
is fitted within said bar to complete said continuous outer wall” in clause “(b),” and the words
“substantially continuous” appearing in the phrase “ said bar and insert providing at least one
substantially continuous surface for contact by an aqueous spray” in clause “(b).” While it would appear
from the language of the claim that the word “continuous” would have its common dictionary meaning of
“[e]xtending or prolonged without interruption or cessation,” The American Heritage Dictionary
Second College Edition 317 (2d ed., 1982), this meaning is in conflict with the reasonable
interpretation of claim 1 that the bar and the insert would each have a separate surface that together
form the outer surface of the claimed solid system in a “substantially,” that is, not entirely, see, e.g., York
Prods., Inc. v. Central Tractor Farm & Family Ctr., 99 F.3d 1568, 1572-73, 40 USPQ2d 1619,
1622 (Fed. Cir. 1996), “continuous surface for contact by an aqueous spray.” See specification, e.g.,
page 4, lines 14-16, and page 8, lines 6-9. However, we are of the view that the issue of indefiniteness
we note here does not amount to the “considerable speculation” found by the predecessor to our
reviewing court to require a technical reversal of a ground of rejection under 35 U.S.C. § 103 in In re
Steele, 305 F.2d 859, 862-63, 134 USPQ 292, 295 (CCPA 1962). It further appears to us that if the
language “inwardly curved bar” is intended to reflect the inward curve of the surface of outer wall 18
necessary to accept the part of insert 14 forming the “substantially continuous surface” as shown in
specification FIG. 6, as contended by counsel at oral hearing, then the language “said bar comprising” in
lines 1-2 of clause “(a)” of claim 1 appears to be indefinite. This matter could be addressed by
amending the cited phrase of clause “(a)” to read “said shape comprising.” These issues should be
considered in any further prosecution of the appealed claims before the examiner.
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