Ex Parte Claeys

Patent Trial and Appeal Board

Jan 18, 2018

14629138 (P.T.A.B. Jan. 18, 2018)

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.
14/629,138 02/23/2015 Jay V. Claeys 007261-00032 1015
28827 7590 01/22/2018
GABLE & GOTWALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3781
NOTIFICATION DATE DELIVERY MODE
01/22/2018 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
iplaw@gablelaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JAY V. CLAEYS
Appeal 2017-003524
Application 14/629,138
Technology Center 3700
Before JAMES P. CALVE, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claim 1 as unpatentable under 35 U.S.C. § 103(a) over
Christensen (US 7,905,368 Bl, iss. Mar. 15, 2011), and Shaw (US
5,813,680, iss. Sept. 29, 1998), and of claim 2 over Christensen, Shaw, and
Dawn (US 2008/0169288 Al, July 17, 2008). We have jurisdiction under 35
U.S.C. § 6(b).
We AFFIRM.
Appeal 2017-003524
Application 14/629,138
THE INVENTION
Appellant’s invention relates to collapsible liquid storage tanks.
Spec. 1. Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. For lining an interior of a collapsible, portable, liquid
holding tank frame having top and bottom rails spaced apart by
vertical struts, a liner comprising:
pliant impervious side walls and a pliant impervious floor
panel, said pliant impervious side walls having at least one
opening therethrough sized to be surrounded by the top and
bottom rails and two adjacent struts of the frame; and
at least one pliant impervious collapsible bag, one for each
said opening, having a mouth welded to its corresponding said
opening, said bag being extendable from said mouth between
its respective surrounding said top and bottom rails and
adjacent struts and outwardly from said side walls.
OPINION
Unpatentability of Claim 1
over Christensen and Shaw
The Examiner finds that Christensen discloses the invention of
claim 1 except that it opens into a drain sleeve instead of a collapsible bag.
Final Action 2—3. The Examiner relies on Shaw as disclosing a tank that
opens into a collapsible bag. Id. at 3^4. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to modify Christensen to open into a collapsible bag instead
of a drain sleeve. Id. According to the Examiner, a person of ordinary skill
in the art would have done this to increase the holding capacity of the tank,
as Shaw teaches to do. Id.
Appellant traverses the Examiner’s rejection by arguing that
Christensen teaches drain sleeves instead of collapsible bags, a point already
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Application 14/629,138
conceded by the Examiner. Appeal Br. 7. Appellant argues that the drain
sleeves are used to facilitate the flow of fluid, not its retention and storage.
Id. Appellant further argues that Christensen increases storage capacity by
connecting the drain sleeve to another tank so that the sleeve is connected to
a tank at both ends. Id. Appellant takes the position that Christensen
increases storage capacity by connecting two tanks together with a drain
sleeve. Id. Appellant contrasts Christensen with its invention by arguing
that Appellant increases the volume of a single tank. Id. at 7—8.
With respect to the Shaw reference, Appellant argues that Shaw’s
primary tank does not have pliant side walls. Id. at 10. Appellant also
argues that Shaw is non-analogous art to the claimed invention. Id. at 8.
In response, the Examiner explains the Christensen is relied on to
teach a collapsible, portable, holding tank, with pliant side walls and that
Shaw is relied on as teaching a pliant, collapsible bag. Ans. 3^4.
Generally speaking, modified Christensen teaches all the
limitations of claim 1, as shown above. Shaw teaches its
expandable portion (i.e. the collapsible bag) being able to be
secured in a stored condition by a door (Col. 4, Ln. 39-43) that
allows for quick deployment of the bag, but also retains the bag
in its original place.
Id. at 5. The Examiner considers both Christensen and Shaw as analogous
art in the field of expandable fluid containment systems. Id. at 4.
In reply, Appellant essentially rephrases and repeats the arguments
made in the Appeal Brief. Reply Br. 2—5.
Upon review of the record, we find the Examiner’s position more
persuasive. Christensen is directed to a portable, collapsible water tank with
a drain sleeve. Christensen, Abstract. Fluid flow through the drain sleeve is
controlled by a valve. Id.', see also id. at Figs. 2 and 3 (element 48). Shaw is
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Application 14/629,138
directed to a hand truck that has a secondary fluid containment means that is
expandable. Shaw, Abstract. Figures 3 and 4 of Shaw show the secondary
containment means in stowed and deployed conditions. Id. The secondary
containment means is disclosed as an expandable bag composed of flexible
material. Id. at col. 4,11. 11—17. Thus, we agree with the Examiner that the
combination of Christensen and Shaw evidences prior knowledge of the
limitations of claim 1, which leaves us with the question of whether
combining them in the manner claimed would have been an obvious
adaptation to a skilled artisan at the time of the invention.
First, regarding Appellant’s challenge to whether the references are
“prior art,” a reference qualifies as prior art for an obviousness
determination when it is analogous to the claimed invention. Innovention
Toys, LLC. v. MGA Ent., Inc., 637 F.3d 1314, 1321 (Fed. Cir. 2011). “Two
separate tests define the scope of analogous art: (1) whether the art is from
the same field of endeavor, regardless of the problem addressed, and (2) if
the reference is not within the field of the inventor’s endeavor, whether the
reference still is reasonably pertinent to the particular problem with which
the inventor is involved.” In re Bigio, 381 F.3d 1320, 1325 (Fed. Cir. 2004).
The “field of endeavor” test asks if the structure and function of the prior art
is such that it would be considered by a person of ordinary skill in the art
because of similarity to the structure and function of the claimed invention
as disclosed in the application.” Id. at 1325—26. “A reference is reasonably
pertinent... if 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 Clay, 966 F.2d 656, 659 (Fed. Cir. 1992).
“If a reference disclosure has the same purpose as the claimed invention, the
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Application 14/629,138
reference relates to the same problem, and that fact supports use of that
reference in an obviousness rejection.” Id.
Christensen and Shaw are both analogous art to the claimed invention.
They both come from the same field of invention as Appellant’s invention,
namely, expandable fluid containment systems. Ans. 4. Whether a
reference is “analogous” is a question of fact. Id. at 658. A preponderance
of the evidence supports the Examiner’s characterization of the field of
endeavor. Appellant’s Specification describes the invention as relating to
collapsible portable tanks for storing liquids and liners used with such tanks.
Spec. 1:15—17. Appellant provides no evidence or persuasive technical
reasoning for defining the field of endeavor more narrowly than the
Examiner.
Next, we are not persuaded by Appellant’s arguments aimed at
Christensen and Shaw individually. It is well settled that non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d
413,425 (CCPA 1981).
Finally, we are not persuaded by Appellant’s argument that the
purpose of Christensen’s sleeve is to connect two tanks. It is not necessary
for the prior art to serve the same purpose as that disclosed in Appellants’
Specification in order to support the conclusion that the claimed subject
matter would have been obvious. See In re Linter, 458 F.2d 1013, 1016
(CCPA 1972). “A reference may be read for all that it teaches, including
uses beyond its primary purpose.” In re Mouttet, 686 F.3d 1322, 1331 (Fed.
Cir. 2012), citing KSR Int 7 Co. v. Teleflex Inc., 550 U.S. 398, 418-421
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(2007) (“In determining whether the subject matter of a patent claim is
obvious, neither the particular motivation nor the avowed purpose of the
patentee controls.”).
We think a person of ordinary skill in the art would find it obvious to
modify Christensen’s sleeve into a container. The obviousness analysis need
not seek out precise teachings directed to the specific subject matter of the
challenged claim, for a court can take account of the inferences and creative
steps that a person of ordinary skill in the art would employ. KSR, 550 U.S.
at 418. When a patent application “simply arranges old elements with each
performing the same function it had been known to perform” and yields no
more than one would expect from such an arrangement, the combination is
obvious. Id. at 417, quoting Sakraida v. Ag Pro, Inc., 425 U.S. 273, 282
(1976).
Here, Appellant merely rearranges the flexible bladder of Shaw so
that it is disposed on the opening of a flexible tank where Christensen’s
drain sleeve would otherwise be disposed. This amounts to mere
substitution of one known element for another yielding a result that is
entirely predictable. “[Wjhen a patent claims a structure already known in
the prior art that is altered by the mere substitution of one element for
another known in the field, the combination must do more than yield a
predictable result.” KSRInt’l Co. v. Teleflex Inc., 550 U.S. at 416; United
States v. Adams, 383 U.S. 39, 50—51 (1966). Here, the Examiner relies on
express teachings of Shaw that a flexible bladder provides extra volume in
excess of the volume of the reservoir. Final Act. 4 (citing Shaw, 2:57—62).
In view of the foregoing discussion, we determine the Examiner’s
findings of fact are supported by a preponderance of the evidence and the
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Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claim 1.
Unpatentability of Claim 2
Over Christensen, Shaw, and Dawn
Claim 2 depends from claim 1 and adds the limitation: “each said
mouth having at least one strap connectable at one end to one of said top and
bottom rails and at another end to another of said top and bottom rails
between its corresponding adjacent struts whereby said bag, when folded
from a closed end thereof to its mouth into a stored condition, can be secured
in said stored condition by said at least one strap.” Claims App.
The Examiner relies on Dawn as disclosing a container with a closure
secured by a strap. Final Action 5. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time of the
invention to modify Christensen/Shaw with a strap as taught by Dawn. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to provide a closure that is both secure and easily removable. Id.
In traversing the rejection, Appellant relies on the same arguments
that we have previously considered in connection with claim 1 and found
unpersuasive and find equally unpersuasive here. Appeal Br. 12—14.
Appellant next argues that Dawn is non-analogous art. Id. at 15. Appellant
argues that Christensen stores hundreds and thousands of gallons of water
for firefighting. Id. Appellant argues that Dawn teaches a trash can and has
nothing to do with a collapsible fluid tank. Id. at 17.
Appellant is not securing a closure (the lid) to a can with a
strap. Appellant is securing a bag welded to, and extending
from, a tank liner in a closed condition on a frame.
Id. at 18.
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Application 14/629,138
Appellants argument regarding Dawn being non-analogous art is not
persuasive. The problem and well-known solution to that problem is
securing something in place with a strap. This problem and well-known
solution are not restricted to the field of portable, flexible water containment
systems.
We find it not unreasonable in cases such as this, involving
relatively simple everyday-type mechanical concepts, to permit
inquiry into other areas where one of even limited technical
skill would be aware that similar problems exist.
In re Heldt, 433 F.2d 808, 812 (CCPA 1970). In essence, claim 2 further
limits the invention of claim 1 by merely securing a loose item with a strap.
We agree with the Examiner that this is obvious.
Accordingly, we sustain the rejection of claim 2.
DECISION
The decision of the Examiner to reject claims 1 and 2 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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