Ex Parte Bahash

Board of Patent Appeals and Interferences

Mar 30, 2012

10737920 (B.P.A.I. Mar. 30, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte TIMOTHY JOSEPH BAHASH
____________

Appeal 2010-003035
Application 10/737,920
Technology Center 3700
____________

Before LINDA E. HORNER, GAY ANN SPAHN, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Timothy Joseph Bahash (Appellant) seeks our review under 35 U.S.C.
§ 134 of the Examiner’s rejection of claims 1-8, 12-17, 19, 21-25, and 28-
30. Appellant cancelled claims 11 and 18. The Examiner withdrew claims
9, 10, 20, 26, and 27 from consideration. Appellant’s representative
presented oral argument on March 15, 2012. We have jurisdiction under 35
U.S.C. § 6(b). We AFFIRM.
Appeal 2010-003035
Application 10/737,920

2
THE CLAIMED SUBJECT MATTER
The claimed subject matter is directed to a soap bar or a substance
application bar (Title) and to an assembly of substance application bars.
Claim 1, reproduced below, with italics added, is illustrative of the subject
matter on appeal.
1. A substance application bar,
comprising:
an application portion having an exterior
surface and an interior surface and configured for
applying a substance to a receiving surface; and
at least one blocking extension extending
adjacent the interior surface of the application
portion to define a retaining recess therebetween,
the blocking extension comprising at least two
upstanding walls spaced from about 1 inch to
about 3 1/2 inches apart, and the blocking
extension and the interior surface being associated
to cooperatively substantially block movement of
an object received in the retaining recess in a
direction generally along the interior surface
against the blocking extension, wherein the recess
is open on at least one end between the walls.

App. Br., Clms. App’x. A-1.

THE REJECTIONS
The following Examiner’s rejections are before us for review.
(1) Claims 1-7, 12, 13, 15, 16, 19, and 21-23 are rejected under 35
U.S.C. § 102(b) as anticipated by Slocum (US 5,834,410, iss. Nov. 10,
1998). Ans. 3.
Appeal 2010-003035
Application 10/737,920

3
(2) Claims 1-8, 12-17, 19, and 21-25 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Morrison (US 3,925,225, iss. Dec. 9, 1975).
Ans. 3.
(3) Claims 1-8, 12, 13, 15, 16, 19, 21-25, and 28-30 are rejected
under 35 U.S.C. § 103(a) as unpatentable over Barford (US 4,460,490, iss.
Jul. 17, 1984). Ans. 3-4.
(4) Claims 1-8, 12-17, 19, and 21-23 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over Aoki (JP 2002-363600 A, pub. Dec. 18, 2002).
Ans. 4.

OPINION
(1) Anticipation based on Slocum
Appellant argues claims 1-7, 12, 13, 15, 16, 19, and 21-23 as a group
and we select independent claim 1 as the representative claim. See App. Br.
5-7; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner interprets Slocum’s Figure 2 embodiment as teaching
each and every limitation in order to anticipate independent claim 1. Ans. 3.
More particularly, the Examiner finds that Slocum’s Figure 2 embodiment
discloses teeth 6a and 6d spaced apart a distance that is within the claimed
range of from about 1 inch to about 3 1/2 inches (i.e., 1.9 inches). Thus, the
Examiner finds that Slocum’s teeth 6a and 6d constitute claim 1’s
upstanding walls. Id.
Appellant contends that “Slocum does not teach that two upstanding
walls spaced from about 1 inch to 3 ½ inches apart and the interior surface
of the bar are associated to cooperatively substantially block movement of
an object,” because even if Slocum’s teeth 6a and 6d are spaced from about
Appeal 2010-003035
Application 10/737,920

4
1.9 inches, they “cannot cooperate with the interior surface to block
movement of an object since teeth 6b and 6c are positioned between them.”
App. Br. 6. Appellant also contends that in light of “the specification’s
discussion that the user inserts his fingers into the recess to grasp the bar and
that the recess facilitates air flow through and drying of the recess for
resisting deterioration of the bar,” a person of ordinary skill in the art would
understand that the upstanding walls recited in claim 1 are adjacent to each
other and that the recess does not have any additional walls between the
upstanding walls, in contrast to Slocum whose teeth 6a and 6d are not
adjacent to each other because teeth 6b and 6c are between teeth 6a and 6d.
App. Br. 6; Reply Br. 2-3; see Spec. 7.
We are not persuaded by Appellant’s contentions. Claim 1 requires
the blocking extension and the interior surface to be “associated to
cooperatively substantially block movement of an object received in the
retaining recess in a direction generally along the interior surface against the
blocking extension.” The Examiner found that Slocum’s teeth 6a and 6d
constitute claim 1’s upstanding walls (Ans. 3), and according to claim 1, a
blocking extension is comprised of at least two upstanding walls. In
Slocum, the blocking extension, comprised of upstanding walls (teeth 6a and
6d), is associated with the interior surface (the surface of the soap bar 5
defining the bottom limit of spaces 7a, 7b, and 7c) by virtue of the
upstanding walls (teeth 6a and 6d) being located adjacent portions of the
interior surface (the portions of the surface of soap bar 5 defining the bottom
limit of space 7a and 7c, respectively). Thus, the upstanding wall (tooth 6a)
cooperates with the interior surface (the portion of the surface of soap bar 5
defined by the bottom limit of space 7a) to substantially block movement of
Appeal 2010-003035
Application 10/737,920

5
an object received in the retaining recess (portion of recess defined by space
7a) in a direction generally along the interior surface against the blocking
extension. Likewise, the upstanding wall (tooth 6d) cooperates with the
interior surface (the portion of the surface of soap bar 5 defined by the
bottom limit of space 7c) to substantially block movement of an object
received in the retaining recess (portion of recess defined by space 7c) in a
direction generally along the portion of the interior surface against the
blocking extension.
In addition, Appellant has failed to persuade us why the presence of
teeth 6b and 6c between teeth 6a and 6d would prevent teeth 6a and 6d from
cooperatively substantially blocking movement of an object received in the
retaining recess. The use of the transitional phrase “comprising” in claim 1
means that the substance application bar may contain elements in addition to
those explicitly recited and still fall within the scope of the claim. See In re
Skvorecz, 580 F.3d 1262, 1267-68 (Fed. Cir. 2009) (“‘comprising’ is well
understood to mean ‘including but not limited to.’” (citation omitted)).
We also decline to accept Appellant’s invitation to read into claim 1
that the upstanding walls are adjacent to each other and that the recess does
not have any additional walls between the upstanding walls. App. Br. 6;
Reply Br. 2-3. Limitations appearing in the specification, but not recited in
the claim, are not read into the claim. See E-Pass Techs., Inc. v. 3Com
Corp., 343 F.3d 1364, 1369 (Fed. Cir. 2003). Thus, the Examiner correctly
noted that the limitations of the upstanding walls being adjacent and not
having additional walls therebetween are not found in claim 1. Ans. 5.
Moreover, we are not persuaded by Appellant’s argument that a recess must
be “bounded by outside walls while excluding additional interior walls or
Appeal 2010-003035
Application 10/737,920

6
obstructions, thereby making the recess unobstructed in its interior” (see
Reply Br. 2-3), because the definition of recess1 does not require a recess to
be unobstructed.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-7, 12, 13, 15, 16, 19, and 21-23 under 35 U.S.C. § 102(b) as
anticipated by Slocum.
(2) Obviousness based on Morrison
Claims 1-8, 12-17, 19, 24, and 25
Appellant argues claims 1-8, 12-17, 19, 24 and 25 as a group and we
select independent claim 1 as the representative claim. See App. Br. 7-8; see
also 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Morrison substantially discloses the subject
matter of independent claim 1. Ans. 3. With respect to claim 1’s recitation
that “the recess is open on at least one end between the walls,” the Examiner
interprets Morrison to meet this recitation by virtue of “the top opening
where the second bar [of] soap is to be inserted [as] the opening of the recess
at the top end between the walls.” Id.
Appellant contends that Morrison does not teach or suggest that the
retaining recess of the substance application bar is open on at least one end
between the walls. App. Br. 7-8. More particularly, Appellant contends that
“[i]t is clear, however, from the specification that the open end in the claims
refers to the side, and not the top end.” App. Br. 8.

1 Appellant cites to Webster’s II New College Dictionary, Houghton Mifflin
Company, Boston, MA (1995) for the definitions of the word “recess” as
“‘an indentation or small hollow’ or ‘an alcove.’” Reply Br. 2-3.
Appeal 2010-003035
Application 10/737,920

7
We are not persuaded by Appellant’s contentions. Appellant does not
refer to any particular portion of the Specification or Drawing Figures as
support for the contention that the open end in the claims refers to the side,
and not the top end as suggested by the Examiner. Regardless, even if the
Specification discloses that the open end of the bar is on the side, this
disclosure is not imported into the claims. See Superguide Corp. v. DirecTV
Enterprises, Inc., 358 F.3d 870, 875 (Fed. Cir. 2004) (“Though
understanding the claim language may be aided by the explanations
contained in the written description, it is important not to import into a claim
limitations that are not a part of the claim.”).
Appellant points to the Specification at page 9, lines 31-33, which
states that “‘the recess 25 remains open on at least one end between the
walls 35, 50,’” and suggests that this applies to all of Figures 1-4 and 8-11,
but not to Figure 7. Reply Br. 4. Appellant alleges that the Figure 7
embodiment does not read on the claim language that “the recess is open on
at least one end between the walls,” because “[t]he Specification makes a
clear distinction” with respect to Figure 7, by stating that “‘a recess 85 [is]
substantially surrounded by the blocking extension 90.’” Id. We are not
persuaded that the portions of Figure 7’s four walls above the interior
surface of the recess, which create a fully enclosed recess with a top
opening, cannot meet the claim limitation of having a recess that is “open on
at least one end between the walls.”
Indeed, a person of ordinary skill in the art would find the Examiner’s
interpretation, that at the top end of Morrison, the recess (cavity 13') is open
between the walls, is reasonable for the following reason. In claim 1, “at
least one blocking extension extending adjacent the interior surface of the
Appeal 2010-003035
Application 10/737,920

8
application portion” defines a retaining recess therebetween. As the
blocking extension comprises at least two upstanding walls, the recess is
formed by the two upstanding walls and the interior surface. In construing
the claim recitation that “the recess is open on at least one end between the
walls” (Emphasis added), we note the ordinary and customary meaning of
the word “between” is “in the time, space, or interval that separates.”
MERRIAM WEBSTER’S COLLEGIATE DICTIONARY, Tenth Edition, Copyright
1997. In Appellant’s substance application bar 5 as shown in Figure 1, the
retaining recess 25 is formed by the two upstanding walls 35, 50 and the
interior surface 120, and the recess 25 is open on three ends “between” or
“in the space that separates” the walls 35, 50. In particular, recess 25 is open
in the space that separates the walls 35, 50 on both U-shaped ends past the
planes that encompass the two U-shaped walls and the recess is open in the
space that separates the walls 35, 50 on the top end past the plane that
encompasses the end portions 45 perpendicular to upstanding walls 35, 50.
Thus, in the same manner that Appellant’s recess 25 is open between the
walls 35, 50 on the top end, Morrison’s cavity 13' in Figure 4 is open
“between” or “in the space that separates” any two unnumbered opposing
walls past the plane that encompasses the unnumbered top walls of the first
soap bar 11'.
In view of the foregoing, we sustain the Examiner’s rejection of
claims 1-8, 12-17, 19, 24, and 25 under 35 U.S.C. § 103(a) as unpatentable
over Morrison.

Appeal 2010-003035
Application 10/737,920

9
Claims 21- 23
Independent claim 21 is directed to a substance application bar having
an application portion and at least one bar-preserving extension adjacent an
interior surface of the application portion to define an open recess
therebetween. App. Br., Clms. App’x. A-2 to A-3. The bar-preserving
extension and the recess are configured to maintain a portion of the recess
open to the atmosphere to facilitate air flow through and for drying of the
recess for resisting deterioration of the bar. App. Br., Clms. App’x. A-3.
Appellant argues claims 21-23 as a group and we select independent
claim 21 as the representative claim. See App. Br. 7-8; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
With respect to independent claim 21, the Examiner makes the same
findings as those discussed supra with respect to Morrison and claim 1.
Ans. 3. Appellant argues that Morrison does not teach or suggest that the
retaining recess of the substance application bar is open on at least one end
between the walls. App. Br. 7-8. For the same reasons as discussed supra
with respect to Morrison and claim 1, we are not persuaded of error in the
Examiner’s rejection.
Appellant also contends that “the soap bar of Morrison does not
facilitate air flow through and . . . drying of the recess for resisting
deterioration,” but rather defeats this purpose. App. Br. 8. Indeed,
Appellant argues that when Morrison’s recess is positioned face up, the
recess acts as a receptacle for fluid and when Morrison’s recess is positioned
face down, the soap bar traps air and moisture inside the recess. Id.
Appellant alleges that in both the face up and face down positions, the recess
facilitates the rapid degradation of the soap bar and growth of bacteria. Id.
Appeal 2010-003035
Application 10/737,920

10
We are not persuaded by Appellant’s contention. Claim 21’s
recitation that the bar-preserving extension and the recess are “configured to
maintain a portion of the recess open to the atmosphere to facilitate air flow
through and for drying of the recess for resisting deterioration of the bar” is
a functional limitation that does not serve to distinguish the structure of the
bar-preserving extension and recess of the claim from the prior art bar-
preserving extension and recess of Morrison. See In re Schreiber, 128 F.3d
1473, 1478 (Fed. Cir. 1997) and In re Swinehart, 439 F.2d 210, 212 (CCPA
1971). Morrison’s bar-preserving extension (upper portion of any of four
walls of the first bar 11' which extends above the bottom surface of cavity
13' as shown in Figure 4) and recess (cavity 13') satisfy the claim language
of being configured to maintain a portion of the recess (cavity 13') open to
the atmosphere to facilitate air flow through and for drying of the recess for
resisting deterioration of the bar, because the bar-preserving extension
(upper portion of any of four walls of the first bar 11' which extends above
cavity 13' as shown in Figure 4) and recess (cavity 13') of Morrison provide
a large opening for air to flow into and out of, this would facilitate drying of
the cavity 13'. Indeed, Appellant has admitted that “a top opening would
facilitate the evaporation of water.” Reply Br. 4. Although Appellant goes
on to state that a top opening “would not have a significant [e]ffect on water
collected under the object placed in the recess” (Reply Br. 4), the claim does
not require an object to be in the recess and Morrison discloses that the
second soap bar 12' can be easily removed from the first soap bar 11'. See
col. 2, ll. 23-28, 34-39.
Furthermore, if a prior art apparatus is structurally identical or
substantially structurally identical to the claimed apparatus, an examiner
Appeal 2010-003035
Application 10/737,920

11
may presume that the two structures have the same properties and
characteristics including similar susceptibility for use in the same
environment. Where such a presumption arises, the applicant bears the
burden to produce evidence to rebut the presumption. In re Best, 562 F.2d
1252, 1255 (CCPA 1977) (citations omitted). Here, Appellant has failed to
rebut the presumption because Appellant has not produced evidence that any
one of Morrison’s bar-preserving extensions (upper portion of any of four
walls of the first bar 11' which extends above cavity 13' as shown in Figure
4) and recess (cavity 13') are not configured to “maintain a portion of the
recess open to the atmosphere to facilitate air flow through and for drying of
the recess for resisting deterioration of the bar” as required by claim 21.
Since Morrison’s bar-preserving extension (upper portion of any of four
walls of the first bar 11' which extends above cavity 13' as shown in Figure
4) and recess (cavity 13') provide a large top end opening for air to flow into
and out of, this which would facilitate air flow into and out of the cavity 13'
and assist in drying the cavity 13'. Thus, Appellant’s argument that
Morrison’s recess (cavity 13'), when positioned face up, would act as a
receptacle for fluid, and when positioned face down, would trap air, is not
persuasive. The term “fluid” encompasses both liquids and gases, such as
air. Thus, when the recess is face up, the large top opening will facilitate air
flow through, in the sense of into and out of, the recess and this will dry the
recess. Likewise, when the recess is face down and air is trapped within the
recess, this will also dry the recess.
Accordingly, we sustain the Examiner’s rejection of claims 21-23
under 35 U.S.C. § 103(a) as unpatentable over Morrison.

Appeal 2010-003035
Application 10/737,920

12
(3) Obviousness based on Barford
Claims 1-8, 12, 13, 15, 16, 19, 24, 25, and 28-30
Appellant argues claims 1-8, 12, 13, 15, 16, 19, 24, 25, and 28-30 as a
group and we select independent claim 1 as the representative claim. See
App. Br. 8-9; see also 37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Barford substantially discloses the subject
matter of independent claim 1, because like Morrison, the Examiner
interprets that Barford’s “recess is open on at least one end between the
walls” by virtue of “the top opening where the second bar [of] soap is to be
inserted [as] the opening of the recess at the top end between the walls.”
Ans. 4. The Examiner also finds that Barford’s Figure 1 embodiment, which
does not have the Figure 2 embodiment’s film 3 of water-soluble or water-
dispersible material, “would expose the top surface of the tablet 2 within the
recess defined by member 1 (a portion of the recess open to the
atmosphere).” Ans. 5.
Appellant contends that “[l]ike Morrison, Barford does not teach or
suggest a bar that is open on at least one end between the walls.” App. Br. 9.
For the reasons discussed supra with respect to Morrison and claim 1,
we are not persuaded by Appellant’s contention that Barford does not teach
or suggest a bar that is open on at least one end between the walls.
Accordingly, we sustain the Examiner’s rejection of independent
claims 1-8, 12, 13, 15, 16, 19, 24, 25, and 28-30 under 35 U.S.C. § 103(a) as
unpatentable over Barford.

Appeal 2010-003035
Application 10/737,920

13
Claims 21- 23
Appellant argues claims 21-23 as a group and we select independent
claim 21 as the representative claim. See App. Br. 5-7; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
With respect to independent claim 21, the Examiner makes the same
findings as those discussed supra with respect to Barford and claim 1. Ans.
4. Appellant argues that Barford does not teach or suggest that the retaining
recess of the substance application bar is open on at least one end between
the walls. App. Br. 9. For the same reasons as discussed supra with respect
to Morrison and claim 1, we are not persuaded of error in the Examiner’s
rejection.
Appellant also contends that “for the same reasons given for
Morrison, the lavatory bar of Barford is not configured to maintain a portion
of the recess open to the atmosphere to facilitate air flow through and for
drying of the recess for resisting deterioration of the bar.” App. Br. 9.
More particularly, Appellants contend that since “the bar of Barford is
immersed in water in order to dissolve and release the ingredients of the bar
to clean the cistern or urinal, . . . there is no motivation to design the bar to
resist deterioration.” Id.
We are not persuaded by Appellant’s contention for the same reasons
as discussed supra with respect to Morrison and claim 21,
Accordingly, we sustain the Examiner’s rejection of claims 21-23
under 35 U.S.C. § 103(a) as unpatentable over Barford.

Appeal 2010-003035
Application 10/737,920

14
(4) Obviousness based on Aoki
Claims 1-8, 12-17, and 19
Appellant argues claims 1-8, 12-17, and 19 as a group and we select
independent claim 1 as the representative claim. See App. Br. 10; see also
37 C.F.R. § 41.37(c)(1)(vii) (2011).
The Examiner finds that Aoki substantially discloses the subject
matter of independent claim 1, because like Morrison and Barford, the
Examiner interprets that Aoki’s “recess is open on at least one end between
the walls” by virtue of “the top opening where the second bar [of] soap is to
be inserted [as] the opening of the recess at the top end between the walls.”
Ans. 4.
Appellant contends that “[l]ike Morrison and Barford, the bar of Aoki
is not open on at least one end between the walls.” App. Br. 10.
For the same reasons as discussed supra with respect to Morrison and
claim 1, we are not persuaded by Appellant’s contention.
Accordingly, we sustain the Examiner’s rejection of claims 1-8, 12-
17, and 19 under 35 U.S.C. § 103(a) as unpatentable over Aoki.
Claims 21- 23
Appellant argues claims 21-23 as a group and we select independent
claim 21 as the representative claim. See App. Br. 10; see also 37 C.F.R.
§ 41.37(c)(1)(vii) (2011).
With respect to independent claim 21, the Examiner makes the same
findings as those discussed supra with respect to independent claim 1 and
Aoki. Ans. 4. Appellant argues that Aoki does not teach or suggest that the
retaining recess of the substance application bar is open on at least one end
between the walls. App. Br. 10. For similar reasons to those discussed
Appeal 2010-003035
Application 10/737,920

15
supra with respect to Morrison and claim 1, we are not persuaded of error in
the Examiner’s rejection.
Appellant also contends that “the bar of Aoki is similar to the bar of
Morrison in that when the recess is face up or face down, rapid deterioration
and growth of bacteria result.” App. Br. 10.
We are not persuaded by Appellant’s contention for similar reasons as
those discussed supra with respect to Morrison and claim 21.
Accordingly, we sustain the Examiner’s rejection of claims 21-23
under 35 U.S.C. § 103(a) as unpatentable over Aoki.

DECISION
We AFFIRM the Examiner’s decision to reject: (1) claims 1-7, 12, 13,
15, 16, 19, and 21-23 under 35 U.S.C. § 102(b) as anticipated by Slocum;
(2) claims 1-8, 12-17, 19, and 21-25 under 35 U.S.C. § 103(a) as
unpatentable over Morrison; (3) claims 1-8, 12, 13, 15, 16, 19, 21-25, and
28-30 under 35 U.S.C. § 103(a) as unpatentable over Barford; and (4) claims
1-8, 12-17, 19, and 21-23 under 35 U.S.C. § 103(a) as unpatentable over
Aoki.
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).

AFFIRMED
Klh