Ex Parte Krick

Board of Patent Appeals and Interferences

Sep 19, 2007

10405723 (B.P.A.I. Sep. 19, 2007)

The opinion in support of the decision being entered today is
not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte DAPHNE KRICK
____________

Appeal 2007-2801
Application 10/405,723
Technology Center 3700
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Decided: September 19, 2007
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Before WILLIAM F. PATE, III, LINDA E. HORNER, and DAVID B.
WALKER, Administrative Patent Judges.

PATE, III, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1 through 22 and
27 through 30 and the refusal of the Examiner to allow claims 23 through 26
as amended after final rejection. Claims 1 through 30 are all the claims in the
application. We have jurisdiction under 35 U.S.C. § 134 and § 6.
The claimed invention is a crush-proof catch pan that is placed
underneath a parked vehicle to catch and hold oil that leaks or drains from
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Application 10/405,723

the vehicle engine. The crush-proof catch pan includes a leash to secure the
catch pan to the vehicle.
Claim 1, reproduced below, is further illustrative of the claimed
subject matter.
1. A waste oil container comprising:

a) an oil catch pan having a bottom, a surrounding wall structure, and
an open top, the pan being sized to fit underneath a parked vehicle to collect
oil leaking from the vehicle, the pan further being integrally formed of a
crush-resistant material that is self-supporting, is sufficiently flexible to
collapse without breaking when crushing force is applied, and is sufficiently
resilient to return to an original condition when the crushing force is
removed; and

b) a leash connected to the pan for securing the pan to the vehicle.

The references of record relied upon by the Examiner as evidence of
anticipation and obviousness are:
Hogenson US 4,114,234 Sep. 19, 1978
Evenson US 4,484,661 Nov. 27, 1984
Garnatz US 4,875,537 Oct. 24, 1989
Sumpter US 5,711,402 Jan. 27, 1998
McEntee US 5,392,948 Feb. 28, 1995
Lee US 5,863,424 Jan. 26, 1999
Nooner US 6,604,390 B1 Aug. 12, 2003

Claims 1 and 11 stand rejected under 35 U.S.C. § 102 as anticipated
by Garnatz.
Claims 1 through 7, 11 through 17, 21 and 22 stand rejected under
35 U.S.C. § 103 as unpatentable over Sumpter in view of Evenson.
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Claims 8 through 10 and 18 through 20 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Sumpter and Evenson as applied to claims 1, 7,
11 and 17 and further in view of Hogenson.
Claims 23 through 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sumpter in view of Evenson and Hogenson and further in
view of Nooner.
Claims 23 through 28 stand rejected under 35 U.S.C. § 103 as
unpatentable over Garnatz in view of Nooner.
Claims 29 and 30 stand rejected under 35 U.S.C. § 103 as
unpatentable over Sumpter in view of Evenson and further in view of Lee.
The final two rejections we have related above appear in paragraphs 7
and 8 of the Answer. These paragraphs are somewhat ambiguous. Paragraph
7 refers to “references” as applied against claims 1 and 11. However, the
following statement of the rejection mentions Garnatz, and thus we presume
the ground of rejection to be Garnatz in view of Nooner. In paragraph 8, the
rejection again refers to claims 1 and 11, but this time, the statement of the
rejection mentions Sumpter as a basic reference. Thus we presume the
rejection of claims 29 and 30 are based on the evidence of Sumpter in view
of Evenson and Lee. In view of our decision, hereinbelow, our presumptions
do not prejudice Appellant.

ISSUES
The issues presented in this appeal are whether the Appellant has
established that the Examiner erred in rejecting claims 1 and 11 as lacking
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novelty over the prior art and whether Appellant has established the
Examiner erred in rejecting claims 1 through 30 as prima facie obvious.

FINDINGS OF FACT
The following are our findings of fact with respect to the scope and
content of the prior art and the differences between the prior art and the
claimed subject matter. Garnatz discloses a disposable oil absorbent drip
pad for securing under the engine or transmission of a vehicle. The pad is
comprised of a bottom layer of aluminum screen 21, a cloth fiberglass
insulation layer 23, and multiple oil absorbent layers 27 bound together by a
peripheral edge binding 33. Grommets 37 are installed in the pad, and the
pad is suspended under the engine or transmission by flexible wire fasteners
15. Garnatz's differs from the claimed subject matter in that it shows a pad
and not a pan, and because it is more or less permanently suspended from
the engine or transmission by flexible wire fasteners.
We are of the view that Appellant’s definition of a pan, as it appears
on page 5 of the Brief, is not unreasonable. We further agree with the
Appellant that the peripherally bound pad of Garnatz cannot reasonably be
construed as a pan. Accordingly, it is our finding that claims 1 and 11 are not
anticipated by Garnatz.
On the other hand, Sumpter does disclose a pan 106 containing a pad
108 positioned inside the pan. The pad 108 has an outer cover 116 that is
formed into a pouch with the outer cover comprised of a mesh material 141
that will allow drops of oil that land of the outer surface of the pad to seep
inward into the pockets or sections 112. The pockets or sections are filled
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with a granular absorbent material. The pan of Sumpter is constructed of
metal such as aluminum or plastic material and is configured so that when
the pad is positioned within the pan, the pan provides protection to the pad
from flying roadway debris. The pan is attached to the underside of the
engine of the automobile by springs 110 which are hooked to components on
the engine. Once the springs are hooked onto the various components in the
engine compartment, the pan should be securely positioned underneath the
engine compartment substantially adjacent the undersurface of the engine.
Sumpter differs from the claimed subject matter in that Sumpter does not
disclose a leash to connect the pan to the vehicle and Sumpter is not
disclosed as being of a crush-proof material that will deform under the
weight of a vehicle and return to its original condition when the weight is
removed.
Evenson discloses a drip pan 10 for vehicles. The pans have two
walls 12, 14 terminating in narrow edges and two walls 13, 15 having lip
members 20. This allows the pans to be nested into a larger array. The pans
themselves are formed of a plastic that will not crack but will yield or carry
the weight of an automobile or truck without substantial damage. The pans
of Evenson are not disclosed with a leash or attachments means to attach the
pans to the vehicle.
McEntee has been cited by the Examiner merely as an example that it
is old and conventional to integrally form handles in the rim of a pan for
easier handling and carrying of the pan. McEntee is not for use under a
vehicle and does not have a leash. It is unclear whether McEntee is of a
crush-proof material.
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Hogenson discloses a leash or a length of chain of open-linked
construction that is designed to secure pieces of luggage together. The leash
has eyelet 6 on one end and a hook member 8 secured to the other end. A
swivel 10 is also provided. Hogenson is not disclosed as securing an oil pan
to a vehicle and has no oil pan disclosure therein.
Nooner discloses a leash or tether 20 for securing an insulated chest to
a vehicle, a tree, or other environmental objects to prevent the chest from
being stolen and to also lock the chest so the contents cannot be pilfered.
We note that while Nooner does not disclose that the chest is for oil drips,
the leash does secure the chest which has the shape of a pan to a vehicle.
Finally, the patent to Lee discloses an internal filter for an oil pan
wherein the oil pan has a plurality of circumferentially spaced vertical ribs
integrally formed with the pan. Lee differs from the claimed invention in
that the oil pan is permanently installed in the vehicle and no tether is
provided to attach Lee to the vehicle.

PRINCPLES OF LAW
The prior art may anticipate a claimed invention, and thereby render it
non-novel, either expressly or inherently. In re Cruciferous Sprout Litig.,
301 F.3d 1343, 1349, 64 USPQ2d 1202, 1206 (Fed. Cir. 2002), cert. denied,
538 U.S. 907 (2003). Express anticipation occurs when the prior art
expressly discloses each limitation (i.e., each element) of a claim. Id. In
addition, “[i]t is well settled that a prior art reference may anticipate when
the claim limitations not expressly found in that reference are nonetheless
inherent in it.” Id.
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In Graham v. John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148
USPQ 459, 467 (1966), the Supreme Court set out a framework for applying
the statutory language of §103:
[T]he scope and content of the prior art are to be determined;
differences between the prior art and the claims at issue are to be
ascertained; and the level of ordinary skill in the pertinent art
resolved. Against this background the obviousness or nonobviousness
of the subject matter is determined. Such secondary considerations as
commercial success, long felt but unsolved needs, failure of others,
etc., might be utilized to give light to the circumstances surrounding
the origin of the subject matter sought to be patented.” Id. at 17-18,
148 USPQ at 467.

While the sequence of these questions might be reordered in any particular
case, the factors continue to define the inquiry that controls. If a court, or
patent examiner, conducts this analysis and concludes the claimed subject
matter was obvious, the claim is invalid or unpatentable under §103. See
KSR Int’l v. Teleflex Inc., 127 S.Ct. 1727, 1734, 82 USPQ2d 1385, 1388
(2007). To facilitate review this analysis should be made explicit. KSR at
1741, 82USPQ2d at 1396. It can be important to identify a reason that
would have prompted a person of ordinary skill in the relevant field to
combine the elements in the way the claimed invention does. This is so
because inventions in most, if not, all cases rely upon building blocks long
since uncovered. Id.

ANALYSIS
As noted above, it was our finding of fact that claims 1 and 11 are not
anticipated by Garnatz, inasmuch as Garnatz does not show a pan.
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Turning to the rejections that have as their basis the combination of
Sumpter and Evenson, we must construe the means-plus-function limitation
of claim 11. We construe Appellant's claimed attachment means as being
limited to a leash comprised of rope, cord, cable, chain or other elongated
flexible member (Specification 3). Appellant's Specification does not
provide an indication of any other equivalent.
We are in agreement with the Appellant that it would not have been
obvious to manufacture the Sumpter pan of a crush-proof plastic material as
disclosed in Evenson, since the material disclosed in Evenson would not
provide protection for the pad. Therefore, we reverse the obviousness
rejections that are based on Sumpter in view of Evenson.
The disclosures of McEntee, Hogenson, Nooner and Lee do not
provide elements or a teaching that would ameliorate the problems we have
found in the rejections based on Sumpter in view of Evenson.
With regard to the obviousness rejections of claims 23 to 28 as
unpatentable over Garnatz in view of Nooner, we find no suggestion in the
prior art for attaching an oil pad as disclosed in Garnatz to a vehicle using
the tether or leash 20 disclosed in Nooner. According to the Examiner,
Nooner discloses that it is desirable to have an elongated flexible line that is
of sufficient length to permit a container to be placed underneath the vehicle
and moved to a stored positioned within the vehicle without uncoupling the
line from the vehicle. However, we do not find this disclosure in the Nooner
reference. There is no disclosure in Nooner of placing the cooler underneath
a vehicle. Therefore, the combination of references including Garnatz and
Nooner would not have been obvious to one of ordinary skill.
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In summary, we have reversed all rejections on appeal.
REVERSED
JRG

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