Ex parte GLADFELTER et al. - Page 3


               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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