Jay Claeys

Patent Trials and Appeals Board

Oct 28, 2020

2020001730 (P.T.A.B. Oct. 28, 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.
15/927,700 03/21/2018 Jay V. Claeys 007261-00039 2189
28827 7590 10/28/2020
GABLE & GOTWALS
100 WEST FIFTH STREET, 10TH FLOOR
TULSA, OK 74103
EXAMINER
CASTRIOTTA, JENNIFER
ART UNIT PAPER NUMBER
3733
NOTIFICATION DATE DELIVERY MODE
10/28/2020 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 2020-001730
Application 15/927,700
Technology Center 3700
Before JILL D. HILL, LEE L. STEPINA, and ARTHUR M. PESLAK,
Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 3–6. See Final Act. 1. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as the inventor, Jay V.
Claeys. Appeal Br. 3.
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Application 15/927,700

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CLAIMED SUBJECT MATTER
Appellant’s invention relates to an expandable-volume liner for a
collapsible liquid holding tank. Claim 3, reproduced below, is representative
of the claimed subject matter:
3. For lining a frame of a collapsible, portable, liquid holding
tank, the frame having top and bottom rails spaced apart by
vertical struts, a liner comprising:
pliant impervious sidewalls sized to extend from the top
rail of the frame to a pliant impervious floor panel at the bottom
rail of the frame, said pliant impervious sidewalls having at least
one opening therethrough, each said opening 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 top and bottom rails and adjacent struts
and outwardly from said side walls, whereby a footprint of the
liner is changed and a storage capacity of the liner is increased
by each extended said at least one collapsible bag.
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Shaw US 5,813,680 Sept. 29, 1998
Christensen US 7,905,368 B1 Mar. 15, 2011
REJECTIONS
I. Claims 3–6 are rejected under 35 U.S.C. § 112(b) as indefinite.
II. Claims 3–6 are rejected under 35 U.S.C. § 103 as unpatentable
over Christensen and Shaw.
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OPINION
Rejection I; 35 U.S.C. § 112(b)
The Examiner determines that claims 3–6 are indefinite because the
term “side wall” lacks antecedent basis. Final Act. 3.
Appellant’s entire discussion of Rejection I is to state, “[c]laims 3–6
have been rejected under 35 USC § 112 because of a typographical error.
Appellant is agreeable to amend Claim 3 at line 11 to change ‘side walls’ to
‘sidewalls.’ Appeal Br. 25.
Appellant makes no assertion that the Examiner erred in rejecting
claims 3–6 as indefinite. Accordingly, we summarily sustain this rejection.

Rejection II; 35 U.S.C. § 103
The Examiner finds that Christensen discloses a tank liner having
most of the limitations of claim 3, except that the opening in Christensen’s
liner is for a drain sleeve, not a collapsible bag. Final Act. 4–5. The
Examiner finds that Shaw discloses a collapsible bag at an opening and
determines that it would have been obvious to modify the liner of
Christensen to include a collapsible bag “to provide a container where the
volume may be increased without a secondary container being required.” Id.
at 5 (citing Shaw, 2:57–62).
Appellant presents arguments under primary headings numbered 1
through 4, and some of the primary headings include various subheadings.2
See Appeal Br. 5–24. We adopt Appellant’s heading numbers and similar
heading descriptions when addressing each of the arguments below.

2 Heading 1 summarizes Appellant’s invention and does not present any
arguments. See Appeal Br. 5–6.
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(2.a.) Elements not Taught by Christensen
No arguments of Examiner error are presented, only a listing of claim
elements. Appeal Br. 6.
(2.b.) Opening Continuous with Mouth of Bag
Appellant asserts that because Christensen’s liner 6 only has openings
40 for drain sleeves 38, Christensen does not have a bag opening. Appeal
Br. 7. According to Appellant, the rejection is improper because
Christensen does not teach all that it is offered for. Id.
As the Examiner correctly finds, and Appellant appears to agree,
Christensen has at least one opening in a pliant sidewall. See Christensen,
2:17–18 (“an opening 40 on the sidewall 10 of the receptacle 6”); see also
Final Act. 4. Because the claim does not require a “bag opening” per se, the
Examiner did not assert that Christensen discloses a bag opening (see Ans.
5), and the Examiner relies on Shaw to teach a tank having at least one pliant
impervious collapsible bag, we are not apprised of error in the Examiner’s
finding as to Christensen’s opening.
(2.c.) Whether Christensen’s Opening is not Sized to be “Surrounded
By”
Appellant argues that Christensen’s opening is not “sized to be
surrounded” by top and bottom rails and two adjacent struts of a frame.
Appeal Br. 7. According to Appellant, Christensen only has openings at the
bottom of the tank and these openings are not sized consistent with the
openings as seen in Appellant’s Figures. Appeal Br. 8–9.
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Appellant’s argument is not persuasive. Although we appreciate that
Appellant’s Figures 1 and 2, for example, depict opening 29 closer to the
members that make up the frame than Christensen’s opening 40 is to his
frame, neither the Specification nor the claims limit the size of the opening
as Appellant asserts. We interpret claims in light of the Specification, but
limitations from the Specification are not read into the claims. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). All that is required is an
“opening sized to be surrounded by the top and bottom rails and two
adjacent struts of the frame.” Appeal Br. 26 (Claims App.). While this may
limit the maximum size to be within the rails and struts, we do not
understand that a minimum size of the opening is defined, so long as it is
bounded by the rails and struts.
(2.d.) Alleged Speculative Conclusions
Appellant asserts that because Christensen’s drain sleeves only let
water out of the tank, they never increase the capacity or change the
footprint of the liner. See Appeal Br. 9–10. Appellant contends that
increasing the footprint is based on speculation and using Appellant’s
claims. See id. According to Appellant, the teachings in Christensen use
more tanks to increase capacity and do not increase individual tank capacity.
Id. at 11.
Appellant’s argument is not persuasive because it amounts to an
attack on Christensen individually, whereas the Examiner’s rejection is
based on a combination of Christensen and Shaw. See In re Merck & Co.,
800 F.2d 1091, 1097 (Fed. Cir. 1986) (nonobviousness cannot be established
by attacking the references individually when the rejection is predicated
upon a combination of prior art disclosures). The Examiner relies on Shaw
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not Christensen for this feature. See Final Act. 5 (Shaw’s bag “chang[es] the
footprint and storage capacity of the tank.”).
(3.a.) Whether Shaw’s Teaching are Specific to Shaw
Appellant argues that the teachings in Shaw are limited to the
application in Shaw. Appeal Br. 11–13. Specifically, Appellant argues that
“Shaw’s teachings are focused exclusively on minimizing the size of a rigid
easy-to-handle hand truck 10.” Appeal Br. 13. According to Appellant, the
size of the hand truck is made smaller by providing expandable emergency
overflow bladders. Id.
Appellant’s arguments are not persuasive. The fact that Shaw uses his
containment means with a hand truck does not so limit the disclosure of
Shaw. Given that the purpose of Shaw’s expandable containment member is
to “provide additional volume in excess of the volume provided for in the
reservoir area” (Shaw, 2:58–60), Shaw’s general teachings of providing
additional volume is applicable to other fluid containment systems.
(3.b.1) Pliant Impervious Sidewalls with Opening
Appellant argues that Shaw does not have a liner and thus, does not
have an opening in “pliant impervious sidewalls” of a liner. Appeal Br. 14.
Appellant argues that because Christensen’s opening is for a drain sleeve
and not a bag, Christensen does not disclose a bag opening. Id. Appellant
asserts, moreover, any opening in Shaw must be above the bottom in order
to allow leaked fluid to flow into the bag, whereas Christensen’s opening
must be in the bottom of the receptacle. Id. Appellant thus asserts that
based on the contradictory teachings of Christensen and Shaw as regards the
purpose and location of the openings, the combination of Christensen and
Shaw does not teach pliant impervious sidewalls having at least one opening
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with a pliant impervious collapsible bag welded to the opening, as required
by claim 3. Appeal Br. 14–15; see also Reply Br. 2–3.
Appellant’s argument does not apprise us of Examiner error because it
depends on a bodily incorporation of the structure of Shaw in the
arrangement disclosed by Christensen, and there is no requirement that the
teachings of the cited references be able to be bodily incorporated. See In re
Nievelt, 482 F.2d 965, 968 (CCPA 1973) (“Combining the teachings of
references does not involve an ability to combine their specific structures.”).
Rather, “if a technique has been used to improve one device, and a person of
ordinary skill in the art would recognize that it would improve similar
devices in the same way, using the technique is obvious unless its actual
application is beyond his or her skill.” KSR, 550 at 417.
Claim 3 recites, in part, “pliant impervious sidewalls having at least
one opening therethrough.” Appeal Br. 26 (Claims App.). As discussed
above, we are not apprised of error in the Examiner’s finding as to
Christensen’s opening. The Examiner then relies on Shaw to disclose a bag
connected to an opening. The Examiner does not rely on the location of
Shaw’s opening and only relies on Shaw to teach connecting a bag to an
opening to increase storage capacity. See Final Act. 5. Appellant does not
apprise us of any reason that connecting a bag to Christensen’s opening as
proposed by the Examiner would have been beyond the abilities of one of
ordinary skill in the art.
(3.b.2) Increased Storage Capacity
Appellant argues that Shaw’s bag is to collect spillage. Appeal Br.
15. Specifically, Appellant asserts that Shaw’s reservoir collects fluid and
when the reservoir overflows, the fluid is then collected in the bag and never
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returned to the reservoir. Appeal Br. 15–16. According to Appellant, the
combined capacity of the reservoir and the bag always adds up to a known
volume, namely, the entire contents of a drum, no matter how many bags are
used. Appeal Br. 16. Appellant asserts that by contrast, each claimed bag
expands the usable-liquid capacity of a 500 to 5,000 gallon liner. Appeal Br.
17.
Appellant’s argument is not persuasive because, as the Examiner
correctly notes, the specific capacity of the bag is not claimed. Ans. 7. Nor
does the claim require that fluid is returned to the liquid holding tank. Shaw
discloses a bag that “is adapted to provide additional volume in excess of the
volume provided for by the reservoir area.” Shaw 2:57–62 (emphasis
added); see also id. 4:54–61; Final Act. 6. Because Shaw explicitly teaches
that its bag increases capacity via expandable containment means, the
Examiner’s reasoning for the proposed combination of teachings is
adequately supported, and we are not apprised of Examiner error.
(3.b.3) Additional Framing
Appellant asserts that Shaw distinguishes optional structure from
indispensable structure. Appeal Br. 17. Based on this distinction, Appellant
asserts that Shaw requires additional framing to form compartment 25 that
has Shaw’s opening, which is contradictory to Christensen and the claims,
which do not have additional framing. Id.
Appellant’s argument does not apprise us of Examiner error. First,
this argument depends on a bodily incorporation of the structure of Shaw in
the arrangement disclosed by Christensen. The Examiner does not rely on
the additional framing of Shaw, and only relies on Shaw for the disclosure of
a bag connected to an opening. “A person of ordinary skill is also a person
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of ordinary creativity, not an automaton.” KSR, 550 U.S. at 421. Given that
Christensen already has a collapsible drain connected to an opening, placing
a bag at Christensen’s opening would not require Shaw’s additional
structure. Second, the claims do not restrict the liquid holding tank in a way
that prevents the inclusion of additional structure, i.e., the claims are open
based on the use of the transition word “comprising.”
(3.b.4) Sized to be Surrounded
Appellant also argues that Christensen’s opening is not “sized to be
surrounded” by top and bottom rails and two adjacent struts of a frame.
Appeal Br. 7. Appellant asserts that Christensen’s opening is only at the
bottom of the tank and does not extend to the top and bottom rails and the
struts of the frame, consistent with the Specification. Id. at 8–9. According
to Appellant, because these teachings are contradictory as to size and
opening location, and are not a teaching of an opening “sized to be
surrounded,” the claims are not unpatentable. Id. at 18.
Appellant’s argument is not persuasive. Although we appreciate that
Appellant’s Figures 1 and 2, for example, depict opening 29 closer to the
members that make up the frame than Christensen’s opening 40 is to his
frame, neither the Specification nor the claims limit the size of the opening
as Appellant asserts. We interpret claims in light of the Specification, but
limitations from the Specification are not read into the claims. See In re Van
Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). All that is required is an
“opening sized to be surrounded by the top and bottom rails and two
adjacent struts of the frame.” Appeal Br. 26 (Claims App.). While this may
limit the maximum size to be within the rails and struts, we do not
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understand that a minimum is defined, so long as the opening is bounded by
the rails and struts.
(3.b.5) Whether Shaw Changes a Collapsible Liner Footprint
Appellant asserts that Shaw does not teach a collapsible liner and does
not change the footprint. Appeal Br. 18. According to Appellant, Shaw uses
a bladder to reduce the volume in a container and the bladder receives a
small fraction of the overflow from the container. Id. Appellant contends
that in contrast to Appellant’s large capacity increase in which the bags store
hundreds of gallons in addition to the hundreds or thousands of gallons in
the tank, Shaw’s bags hold a minimum amount and do not increase capacity
of a collapsible liner. Id. at 18–19.
Appellant’s argument is not persuasive, because as the Examiner
correctly notes, the specific capacity of the bag is not claimed. Ans. 7.
Shaw discloses a bag that “is adapted to provide additional volume in excess
of the volume provided for by the reservoir area.” Shaw 2:57–62 (emphasis
added); see also id. 4:54–61; Final Act. 6. Shaw’s reservoir has a given
capacity, similar to Appellant’s tank, and the bags are used to increase the
capacity over that of the reservoir, as seen in Figure 4 of Shaw, reproduced
below.
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Shaw’s Figure 4 is a cross-sectional view showing the expandable
containment means in the expanded state. Shaw, 3:20–22.
As seen in Figure 4 of Shaw, reservoir 21 has an initial foot print
defined by bottom wall 23. Compare Shaw’s Figures 3 and 4. When bag 24
is expanded, “the total retention volume for the device is not the volume of
the reservoir 21 alone, but is the combined volume of the reservoir 21 and
the expandable containment means 24.” Shaw, 4:56–59. Because Shaw
explicitly teaches that its bag increases capacity via expandable containment
means, and because Shaw’s drawings depict a change in footprint, we are
not apprised of Examiner error.
(4.a.) Analogous Art
Appellant also argues that the rejection is improper because
Christensen and Shaw are not analogous inventions. Appeal Br. 19.
Appellant contends that the Examiner’s assertion that Christensen and Shaw
are in the same field of “fluid containment systems,” is improper because
“Christensen and Shaw involve structurally, volumetrically, operationally
and functionally different systems.” Id. at 20. Appellant contends that the
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field of fluid containment systems is so broad that the Examiner’s assertion
as to analogous art is speculative. Id. at 20–21.
The Examiner responds that the references are analogous inventions
because they are both in the field of expandable fluid containment systems.
Ans. 7.
Notwithstanding that the analogous art test compares the references to
the claimed invention and not each other, the Examiner has the better
position. Although we appreciate Appellant’s assertion that the field of fluid
containment systems is broad (see Appeal Br. 19), Appellant does not
explain persuasively why the particular expandable fluid containment
systems relied upon by the Examiner, are outside of Appellant’s field of
endeavor. Appellant’s field of endeavor is determined by referring to the
entirety of the disclosure and not just the claims at issue. See, e.g., In re
Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 2009) (relying on specification to
determine applicant’s field of endeavor). In addition, “[t]h[e field of
endeavor] test for analogous art requires the PTO to determine the
appropriate field of endeavor by reference to explanations of the invention’s
subject matter in the patent application, including the embodiments,
function, and structure of the claimed invention.” In re Bigio, 381 F.3d
1320, 1325–26 (Fed. Cir. 2004).
In this case, Appellant’s Specification describes the technical field as
relating to collapsible portable tanks for storing liquids. Spec., 1:16–17.
Christensen relates to a portable water tank. Christensen, 1:6–7. The tank
of Christensen includes hinges to make it foldable, i.e., collapsible. Id. at
2:3–10. Christensen’s tank and the claimed liquid holding tank have similar
structure including a frame for a pliable receptacle. Compare Christensen’s
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Figure 1 and Appellant’s Figure 1. Given that Christensen’s tank is similar
to the disclosed tank, functions in a similar manner, and has similar
structure, we agree with the Examiner that Christensen meets the field of
endeavor test for analogous art.
Shaw relates to hand trucks having expandable secondary containment
means. Shaw, 1:15–16. Shaw’s hand truck also includes a reservoir for
storing a liquid, and the expandable containment means is adapted to
provide additional volume in excess of the volume provided for by the
reservoir. Shaw, 2:58–60. Although Shaw does not use the term “tank,” the
reservoir of Shaw is similar to the disclosed tank, functions in a similar
manner to store liquids, and has similar structure, i.e., four sides with at least
one side including an expandable containment means, and is portable. We
agree with the Examiner that Shaw meets the field of endeavor test for
analogous art.
(4.b. and 4.c) Whether the Rejection is Merely Speculative
Appellant argues that the Examiner’s basis for the rejection is
speculative and is unreasonable. Appeal Br. 21; see also Reply Br. 7.
Specifically, Appellant argues that it would not have been obvious to
provide a container with an increased volume based on Shaw, because
Shaw’s bag is used to minimize the storage capacity of its rigid secondary
containment means. Id. at 22. According to Appellant, “[i]t is not a
reasonable rationale that a POSITA would have modified the liner of
Christensen with the teachings of Shaw to provide a container where the
volume may be increased without a secondary container being required”. Id.
at 24. Thus, Appellant contends that the references do not provide
motivation for using capacity-increasing collapsible bags. Id.
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Appellant’s arguments are not persuasive. The Examiner’s rationale
to modify the liner of Christensen with the teachings of Shaw is “in order to
provide a container where the volume may be increased without a secondary
container being required.” Final Act. 6. This reasoning comes directly from
Shaw, which discloses “an expandable containment member which is
adapted to provide additional volume in excess of the volume provided for
by the reservoir area.” Shaw, 2:57–62; see also Final Act. 5. “[I]f a
technique has been used to improve one device, and a person of ordinary
skill in the art would recognize that it would improve similar devices in the
same way, using the technique is obvious unless its actual application is
beyond his or her skill.” KSR, 550 U.S. at 417. Appellant does not apprise
us of any reason to think that providing an expandable containment member
to Christensen’s tank to provide additional volume in excess of the volume
provided for by the tank would have been beyond the skill of an ordinary
artisan. Indeed, Shaw explicitly teaches that “the total retention volume for
the device is not the volume of the reservoir 21 alone, but is the combined
volume of the reservoir 21 and the expandable containment means 24.”
Shaw 4:54–59.
We have considered all of Appellant’s arguments in support of the
patentability of claim 3, but find them unavailing. Accordingly, we sustain
the rejection of claim 3 as unpatentable over Christensen and Shaw.
Appellant makes no additional arguments in support of the patentability of
claims 4–6, and these claims fall with claim 3.
CONCLUSION
The Examiner’s rejections are affirmed.
More specifically,
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DECISION SUMMARY
Claims
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
3–6 112(b) indefiniteness 3–6
3–6 103 Christensen, Shaw 3–6
Overall
outcome:
3–6

TIME PERIOD FOR RESPONSE
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