ASSET GUARD PRODUCTS INC. et al.

Patent Trials and Appeals Board

Oct 27, 2020

90014303 - (D) (P.T.A.B. Oct. 27, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
90/014,303 05/10/2019 9410302 150693.00001 7884
138062 7590 10/27/2020
Patterson & Sheridan, LLP/CARBO
24 Greenway Plaza, Suite 1600
Houston, TX 77046
EXAMINER
TORRES VELAZQUEZ, NORCA LIZ
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
10/27/2020 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ASSET GUARD PRODUCTS INC.
Patent Owner and Appellant

Appeal 2020-006249
Reexamination Control 90/014,303
Patent 9,410,302 B2
Technology Center 3900
BEFORE RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
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DECISION ON APPEAL
STATEMENT OF THE CASE1
Pursuant to 35 U.S.C. § 134(b) and 306, Asset Guard Products Inc.
(“Appellant”)2 appeals from the final rejection of claims 1–27.3 We have
jurisdiction under 35 U.S.C. §§ 6, 134(b), and 306.
We affirm.
CLAIMED SUBJECT MATTER
The ’302 Patent issued to Larry L. Perkins and Tim Kriegshauser on
August 9, 2016 from Application 14/285,898 filed on May 23, 2014. This
reexamination proceeding arose from a third-party request for ex parte
reexamination filed by Leisa Talbert Peschel of Jackson Walker LLP.
(Request for Ex Parte Reexamination filed May 10, 2019).
Appellant states that the invention relates to a structural element that
provides load bearing support and protects against spills and leaks associated
with any type of storage, tank, or vessel. U.S. Patent 9,410,302 B2
(hereinafter “the ’302 Patent”), col. 1, ll. 15–22. Claim 1, reproduced below,
is illustrative of the claimed subject matter (Appeal Br., Claims Appendix,
36–37):

1 This Decision includes citations to the following documents: Final Office
Action mailed October 18, 2019 (“Final Act.”); Appeal Brief filed April 17,
2020 (“Appeal Br.”); Examiner’s Answer mailed June 29, 2020 (“Ans.”);
and Reply Brief filed August 31, 2020 (“Reply Br.”).
2 Appellant identifies Asset Guard Products Inc. as the real party in interest.
Appeal Br. 4.
3 Originally issued claims 28–32 are not subject to reexamination. Final
Act. 1 (Box 1b).
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1. A tank base sized to provide a load-bearing support for an
above-ground storage tank and configured to allow
moisture to pass, the above-ground storage tank having a
bottom and defining an outer circumference, the tank base
comprising:
a first encapsulated substrate, comprising:
a first part having a first thickness sized to provide the
load-bearing support for the above-ground storage
tank; and
a first elastomer encapsulating the first part;
wherein the first encapsulated substrate comprises a
first planar portion;
a second encapsulated substrate positioned adjacent to the
first encapsulated substrate, the second encapsulated
substrate comprising:
a second part having a second thickness sized to
provide the load-bearing support for the above-ground
storage tank; and
a second elastomer encapsulating the second part;
wherein the second encapsulated substrate comprises a
second planar portion; and
wherein the first and second planar portions are coplanar
and perpendicular to each of the respective first and
second thicknesses of the first and second parts; and
a first seam formed between the first and second
encapsulated substrates to allow for moisture to pass between
the first and second encapsulated substrates so that moisture
is allowed to seep away from the bottom of the tank, via the
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first seam, when the tank base provides the load-bearing
support for the above-ground storage tank.
Claims 15 and 24 are also independent and recite a tank base and a
kit, respectively, with similar limitations as recited in claim 1. Id. at 39–44.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Noble US 6,327,722 B1 December 11, 2001
Flam US 6,418,861 B1 July 16, 2002
Simonson et al.
(hereinafter “Simonson”)
US 6,877,189 B2 April 12, 2005
Heinz US 7,114,210 B2 October 3, 2006

REJECTIONS
1. The Examiner rejected claims 1–3, 5–17, and 19–27 under pre-
AIA 35 U.S.C. § 103(a) as unpatentable over Noble and Heinz.
Final Act. 3–7.
2. The Examiner rejected claims 4 and 18 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Noble, Heinz, and
Simonson. Final Act. 7.
3. The Examiner rejected claims 1–3, 5–7, 10, 12–17, 19, 20, and
24 under pre-AIA 35 U.S.C. § 103(a) as unpatentable over
Noble and Flam. Final Act. 7–10.
4. The Examiner rejected claims 8, 11, 21, 23, 25, and 27 under
pre-AIA 35 U.S.C. § 103(a) as unpatentable over Noble, Flam,
and Heinz. Final Act. 10.
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5. The Examiner rejected claims 4 and 18 under pre-AIA 35
U.S.C. § 103(a) as unpatentable over Noble, Flam, and
Simonson. Final Act. 10–11.
OPINION
Rejections 1, 3 and 4
Appellant does not present separate arguments with respect to the
claims subject to these rejections. See Appeal Br. 12–32. In addition,
Rejection 4 relates to claims that depend either directly or indirectly from
independent claims 1, 15, and 24, the subject of Rejection 3. Accordingly,
we discuss these rejections together and confine our discussion to
independent claim 1, which is representative of the arguments made by
Appellant in accordance with 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner’s Rejections
In rejecting claim 1 under Rejections 1 and 3, the Examiner found
Noble discloses a round support pad for a spa (water tank) made of multiple
pieces of foam, where the pieces of foam are treated with a barrier coating to
prevent deterioration to the foam. Final Act. 3, 7. The Examiner found the
construction of Noble forms a seam at assembly edge 15a between sections
5 and 7 that would allow moisture to seep away. Id. at 4; Noble Figs. 1, 2.
The Examiner found that to the extent Noble does not disclose
encapsulating the foam, the Examiner relies on either Heinz (Rejection 1) or
Flam (Rejection 3). Id. at 4, 8.
The Examiner found Heinz discloses a general purpose ramp made of
a lightweight composite including a foam plastic core, which is encapsulated
in a high tensile strength polyurea coating of sufficient thickness to provide
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a durable surface when cured and create a strong composite structure. Id. at
4–5.
The Examiner found that Flam relates to structures that provide
support and hold loads, in the form of a plurality of plate members used to
form a pallet, where the plate members are formed from a polystyrene foam
core and encapsulated in a rigid polyurea coating material. Id. at 8.
The Examiner determined that because Noble, Heinz, and Flam
disclose coated foam core composites, the purpose disclosed in Heinz and
Flam would have been recognized in the pertinent art of Noble. Id. at 5, 8.
The Examiner determined it would have been obvious to modify the
support pad of Noble by encapsulating the polystyrene foam with the
polyurea coating of Heinz to produce a strong composite structure with high
tensile strength as to accommodate heaving weights as disclosed by Heinz.
Id. at 5. Similarly, the Examiner determined it would have been obvious to
modify the support pad of Noble by encapsulating polystyrene foam with
polyurea coating of Flam with the motivation of producing constructions
that are light weight while maintaining strength. Id. at 8.

Appellant’s Contentions
Appellant argues Noble, Heinz, and Flam are non-analogous art
because they are not from the same field of endeavor and are not reasonably
pertinent to the problem faced by the inventor. Appeal Br. 13–19.
Appellant contends Noble, Heinz, and Flam fail to disclose an
elastomer. Id. at 19–27. Rather, Appellant argues the materials in Noble,
Heinz, and Flam are hard, rigid and prone to flaking. Id. at 22, 25.
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Appellant argues Noble does not disclose a seam as recited in claim 1, and
discloses moisture barriers that impede movement between the sections 5
and 7 (id. at 28), which corresponds to the seam as identified by the
Examiner. Appellant contends that the proposed modification of Noble’s
pad to include Heinz’s encapsulation layer would render Noble’s pad
unsatisfactory for its intended purpose, because Noble discloses a “do-it-
yourself” project where the support pad is easily pierced, such that
modifying Noble to add Heinz’s or Flam’s encapsulating layer, would
prevent or be divergent to an essential feature of Noble’s pad. Id. at 32–33.

Discussion
Analogous Art
Determining whether a reference is non-analogous art is a two-fold
inquiry. First, we must decide if the reference is within the field of the
inventor’s endeavor; if it is not, we proceed to determine whether the
reference is reasonably pertinent to the particular problem with which the
inventor was involved. See In re GPAC Inc., 57 F.3d 1573, 1578 (Fed. Cir.
1995); In re Wood, 599 F.2d 1032, 1036 (CCPA 1979).
The field of endeavor can be correctly determined “by consulting the
structure and function of the claimed invention as perceived by one of
ordinary skill in the art” with “reference to explanations of the invention's
subject matter in the patent application.” In re Bigio, 381 F.3d 1320, 1325-
26 (Fed. Cir. 2004) (affirming Board's finding that prior art toothbrush was
in same field of endeavor as patentee's hairbrush where Board concluded
that “the structural similarities between toothbrushes and small brushes for
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hair would have led one of ordinary skill in the art working in the specific
field of hairbrushes to consider all similar brushes including toothbrushes”).
“‘A reference is reasonably pertinent if, even though it may be in a
different field from that of the inventor’s endeavor, it is one which, because
of the matter with which it deals, logically would have commended itself to
an inventor’s attention in considering his problem.’” In re ICON Health and
Fitness, 496 F.3d 1374, 1379–80 (Fed Cir. 2007) (quoting In re Clay, 966
F.2d 656, 659 (Fed. Cir. 1992)). “In other words, ‘familiar items may have
obvious uses beyond their primary purposes.’” Id. at 1380 (quoting KSR
Int'l Co. v. Teleflex Inc., 127 S. Ct. 1727, 1742 (2007)).
We are unpersuaded by Appellant’s arguments that Noble is non-
analogous art. We agree with the Examiner that Noble is in the same field
of endeavor as Appellant. As the Examiner points out, the ’302 Patent
describes the invention “as a load bearing material for use in protecting
against accidental spills and leaks associated with any type of storage, tank,
or vessel.” The ’302 Patent, col. 1, ll. 19–22. Likewise, Noble discloses a
“prefabricated apparatus for leveling and supporting a spa” (Noble, col. 1, ll.
8–10), which are essentially tanks that hold large volumes of water.
Although Appellant argues that the ’302 Patent is directed to a
specific type of tank in the form of an above ground storage tank (AST),
which refers to a tank used to store produced water from an oil or gas well at
the well site (Reply Br. 2–3), because the spa platforms of Noble have
structural similarities to the tank base of the ’302 Patent we are not
persuaded that Noble and the ’302 Patent would be in different fields of
endeavor.
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Moreover, even if Noble could be a considered as being from a
different field of endeavor, we are of the view that Noble is at least
reasonably pertinent to the particular problem with which the inventor is
concerned. That is, the ’302 Patent discloses “a need exists for a more
efficient, effective and convenient method for building an improved tank
base to provide for safer environment and green waste.” The ’302 Patent,
col. 2, ll. 23–25. The ’302 Patent emphasizes further the encapsulated core
material tank base provides a “more conveniently portable installation.” Id.
at col. 2, ll. 52–54. We are of the view that the “prefabricated, portable spa
platform” that allows for “convenient” placement of a spa as disclosed in
Noble (Col. 2, ll. 2–6, 62–64), is reasonably pertinent to the need in the ’302
Patent identified above.
Regarding Heinz and Flam, we agree with the Examiner that both
references are reasonably pertinent to the problem with which the inventor
of the ’302 Patent is concerned. In this regard, the ’302 Patent discloses that
the polystyrene foam core material is “subsequently coated with polyurea for
protection and strength.” The ’302 Patent, col. 2, ll. 40–45. The ’302 Patent
also emphasizes the “strength of polyurea, which helps encapsulate the
polystyrene and keeps it from flaking off and failing under the weight of []
the tank.” Id. at col. 4, ll. 43–49. Thus, a problem disclosed in the ’302
Patent is strengthening a core foam material by encapsulating it with an
elastomer, as recited in claim, to provide a suitable tank base.
As a result, we find that one of ordinary skill in the art would have
found Heinz’s disclosure of a polystyrene foam core material that “is
encapsulated in a high tensile strength polyurea coating of sufficient
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thickness to provide a durable surface when cured and create a strong
composite structure” (Heinz, col. 1, ll. 57–61) to be reasonably pertinent to
this problem disclosed in the ’302 Patent. Similarly, Flam’s disclosure of a
polystyrene foam core that is strengthened by a polyurea coating (Flam, col.
1, ll. 58–65) is also reasonably pertinent to the above discussed problem of
strengthening a core material disclosed in the ’302 Patent.
As a result, we are not persuaded the Examiner erred in determining
that Noble, Heinz, and Flam are analogous art to the ’302 Patent.

Obviousness
We are not persuaded by Appellant’s arguments that Heinz and Flam
fail to disclose polyurea elastomers. Appellant’s arguments that Heinz’s
disclosure of a high tensile strength polyurea or a hard coat polyurea along
with Heinz’s disclosure of vertical edge panels to resist compressive loads
means that Heinz’s polyureas are not elastomers are insufficient to
demonstrate reversible error on the part of the Examiner. Appeal Br. 21–22.
In particular, contrary to Appellant’s assertions, it does not follow that
because Heinz is silent as to the compressive strength of the polyureas
disclosed therein, that such are “prone to flaking and are not elastomers.”
Id. at 21.
As the Examiner points out, the ’302 Patent itself generally discloses
“[p]olyurea is an elastomer derived from the reaction between and
isocyanate component and a resin blend component.” The ’302 Patent, col.
4, ll. 37–38; Ans. 5, FN3. Further, as the Examiner explains, Appellant’s
argument with respect to compressive strength of the polyurea is
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inconsistent with the ’302 Patent, which discloses compressive strength is
provided by the polystyrene foam. Ans. 5–6, citing ’302 Patent, col. 4, ll.
44–49. Appellant has not produced sufficient direct evidence to contradict
the Examiner’s position that all polyureas would be considered elastomers.
For similar reasons, Appellant’s contention that Flam fails to disclose
polyurea elastomers (Appeal Br. 24–25) is not persuasive.
We are also not persuaded that one of ordinary skill in the art would
not have combined Noble with Heinz or Flam because such are in “disparate
technical fields.” Appeal Br. 22, 25. Appellant’s arguments in this regard
appear to focus on the structural differences between spas and ramps (Heinz)
or pallets (Flam) without addressing the Examiner’s reasoning for
combining the references as discussed above. Indeed, in KSR, the Supreme
Court explained, “[w]hen a work is available in one field of endeavor,
design incentives and other market forces can prompt variations of it, either
in the same field or a different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars its patentability.” KSR
Int'l Co. v. Teleflex Inc., 550 U.S. 398, 417 (2007). “A person of ordinary
skill is also a person of ordinary creativity, not an automaton.” Id. at 421.
Further, we are not persuaded by Appellant’s argument that the cited
prior art fails to disclose a seam between substrates to allow moisture to pass
between the first and second substrates. Appeal Br. 27–31. Most notably,
Appellant contends that Noble requires adhesive tape or bonded fabric along
the top surfaces of and spanning both sections of the support, which would
necessarily impede movement of moisture between the sections. Id. at 27–
28; Reply Br. 5.
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We are not persuaded by this argument, because, as the Examiner
points out, the broad teachings of Noble would allow for seams formed
between encapsulated sections of the pad to allow moisture to pass. Ans. 7.
In this regard, Noble discloses a means, which may be tape, “for permitting
joining the section to allow them to be held together during installation of
the spa.” Noble, col. 4, ll. 29–32. Thus, Noble does not require the tape to
be present after the spa is installed, which is consistent with the Examiner’s
position.
Although Appellant contends Noble does not disclose removing the
tape, and that there is no opportunity to remove the tape disposed beneath
the spa because the spa is disposed on top of the means (Reply Br. 5), we do
not agree that one of ordinary skill in the art would view Noble to be as
limited as Appellant argues. That is, because Noble discloses the tape is
utilized during installation, we do not find such a disclosure to mean that the
spa tank necessarily must be lowered all the way down to the pad such that if
so desired, one of ordinary skill in the art would have been able to remove
the tape. See Noble Fig. 3.
In addition, although Noble discloses “another embodiment,” where a
fabric may be locked into place with a moisture barrier coating or other
paint, such embodiment is merely an alternative and not a required feature of
Noble’s invention. As to Appellant’s further arguments with respect to
Heinz and Flam and the presence of seams (Appeal Br. 29–31), we agree
with the Examiner that Heinz and Flam were relied upon for encapsulating a
foam core, and not for the presence of seams. Ans. 7. Accordingly,
Appellant’s arguments in this regard are not persuasive.
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Last, we are not persuaded by Appellant’s argument that the
Examiner’s proposed modifications would render Noble unsatisfactory for
its intended purpose. Appeal Br. 32–33. That is, Appellant’s argument that
encapsulating the foam core of Noble with the polyureas of Heinz or Flam
would “prevent or at least follow a path divergent to, an essential feature of
Noble’s pad,” which is that the pad is easily pierced, is merely unsupported
Attorney argument. As the Examiner points out, Noble discloses the
installation may be accomplished by the buyer or a general handyman, and
there is no indication that the encapsulation of the foam core would be such
that piercing the coated rigid plastic foam could not have been accomplished
if desired. Ans. 8; Noble col. 2, ll. 34–37. Appellant did not provide
objective evidence that coating the foam core would preclude it from being
pierced.
Therefore, we affirm Rejections 1, 3, and 4.

Rejections 2 and 5
The Examiner’s Rejections
Claims 4 and 18 recite “the tank base further comprises a strap
extending around an outer periphery of the tank base to hold the first and
second encapsulated substrates together.”
The Examiner found that Noble in view of Heinz or Flam fails to
disclose this feature. Final Act. 7, 11. The Examiner found Noble discloses
tape, a strip of fabric, sheet plastic, or the like to hold two sections together
during installation, and further found that the use of an alternate fastening
means, such as a strap around the outer periphery of the pad, would have
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been an obvious fastening means to one of ordinary skill in the art. Id. The
Examiner found a strap has the advantage of providing a hold with
adjustable compression, and when the base is large in diameter, the use of a
strap would ensure better handling of the unit compared to a base that is held
together only at a seam. Id. The Examiner determined it would have been
obvious to have placed and tightened a strap around the circumference of the
pad so as to move the two halves together and tightly bind them in place
because the use of straps to secure objects is well known in the art. Id. As
evidence of this, the Examiner points to Simonson. Id. citing Simonson, col.
1, ll. 5–26.
Appellant’s Contentions
Appellant argues Simonson fails to disclose a strap extending around
an outer periphery of a tank base, and placing a strap around the support pad
of Noble would preclude a first section from being tilted upward with
respect to the second section, such that one of ordinary skill in the art would
not have been motivated to use a strap in the support pad of Noble. Appeal
Br. 33. Appellant argues the Examiner’s rationale is based on impermissible
hindsight. Id. at 33–34.

Discussion
We are not persuaded by Appellant’s arguments. As the Examiner
points out, Noble does not require the spa support pad to be pivoted upward.
Ans. 9. Noble discloses the spa is allowed to be pivoted upward “in some
cases” to permit utility lines to be passed from outside the spa to connect to
the spa. Noble, col. 4, ll. 29–38. Accordingly, that Noble allows for a pad
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section to be pivoted upward, does not mean that one of ordinary skill in the
art would not have sacrificed the pivoting ability imparted by the tape for an
increase in tension force imparted by a strap to a pad support. Allied
Erecting v. Genesis Attachments, 825 F.3d 1373, 1381 (Fed. Cir. 2016)
(“Although modification of the movable blades may impede the quick
change functionality disclosed by Caterpillar, ‘[a] given course of action
often has simultaneous advantages and disadvantages, and this does not
necessarily obviate motivation to combine.’” (quoting Medichem, S.A. v.
Rolabo, S.L., 437 F.3d 1157, 1165 (Fed Cir. 2006) (citation omitted)))
We are also not persuaded by Appellant’s argument the Examiner
relied on improper hindsight. Regarding the use of hindsight,
[a]ny judgment on obviousness is in a sense necessarily a
reconstruction based on hindsight reasoning, but so long as it
takes into account only knowledge which was within the level
of ordinary skill in the art at the time the claimed invention was
made and does not include knowledge gleaned only from
applicant’s disclosure, such a reconstruction is proper.
In re McLaughlin, 443 F.2d 1392, 1395 (CCPA 1971). The Supreme Court
indicated that a factfinder “must be cautious of arguments reliant upon ex
post reasoning,” but went on to state that “[r]igid preventative rules that
deny factfinders recourse to common sense, however, are neither necessary
under our case law nor consistent with it.” KSR Int’l. Co. v. Teleflex, Inc.,
550 U.S. 398, 421 (2007).
In this regard, Simonson supports the Examiner’s rationale that the
use of straps is well known to secure objects, and has the mechanical
advantage to increase tension forces to secure objects. Simonson, col. 1, ll.
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10–26. Thus, contrary to Appellant’s argument, we are of the view the
Examiner did not rely on improper hindsight in rejecting claims 4 and 18.
As a result, we affirm Rejections 2 and 5.

DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
1–3, 5–17,
19–27
103(a) Noble, Heinz 1–3, 5–17,
19–27

4, 18 103(a) Noble, Heinz,
Simonson
4, 18
1–3, 5–7,
10, 12–17,
19, 20, 24
103(a) Noble, Flam 1–3, 5–7,
10, 12–17,
19, 20, 24

8, 11, 21,
23, 25, 27
103(a) Noble, Flam,
Heinz
8, 11, 21,
23, 25, 27

4, 18 103(a) Noble, Flam,
Simonson
4, 18
Overall
Outcome
1–27
REQUESTS FOR EXTENSIONS OF TIME
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).
AFFIRMED

dw

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For PATENT OWNER:

PATTERSON & SHERIDAN, LLP/CARBO
24 Greenway Plaza
Suite 1600
Houston, TX 77046

For THIRD PARTY REQUESTER:

HOUSTON IP DEPARTMENT JACKSON WALKER LLP
1401 McKinney Street
Suite 1900
Houston, TX 77010