3283688 Nova Scotia Limited

Patent Trials and Appeals Board

Jul 30, 2020

15512142 - (D) (P.T.A.B. Jul. 30, 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.
15/512,142 03/17/2017 Joseph Edward Boudreau 3934.0 6203
22497 7590 07/30/2020
LARSON AND LARSON
11199 69TH STREET NORTH
LARGO, FL 33773
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
07/30/2020 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):
frank@larsonpatentlaw.com
ipdocket@larsonpatentlaw.com
patents@larsonpatentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JOSEPH EDWARD BOUDREAU
____________

Appeal 2020-002480
Application 15/512,142
Technology Center 3600
____________

Before EDWARD A. BROWN, ANNETTE R. REIMERS, and
JEREMY M. PLENZLER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s
decision rejecting claims 25–38, which are the pending claims. 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 3283688 Nova Scotia Limited as the real
party in interest. Appeal Br. 2.
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Application 15/512,142

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CLAIMED SUBJECT MATTER
Claims 25, 32, and 38 are independent claims. Claim 25 illustrates
the claimed subject matter.
25. A seafood storage vessel for transportation of live
seafood comprising:
a container formed from:
two or more end walls, each of the two of more
end walls having an innermost end wall surface and an
outermost end wall surface;
two or more side walls, each of the two or more
side walls having by an innermost side wall surface and
an outermost side wall surface;
a discharge channel formed from
an inlet orifice in a lower half of the innermost side
wall surface;
an outlet orifice in an upper half of the outermost
side wall surface;
a channel connecting the inlet orifice to the outlet
orifice;
whereby water contaminated by waste from the seafood
flows through into the inlet orifice, through the discharge
channel, and exits the container at the outlet orifice.
Appeal Br. 22 (Claims App.).

REJECTIONS ON APPEAL
Claims 26, 31, and 33 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 4.
Claims 25–31 and 38 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement. Final Act. 3.
Claims 25, 28, 30, 32, 35, and 37 are rejected under 35 U.S.C.
§ 102(a)(1)/(a)(2) as anticipated by Pardo (EP 2567620 A1, published Mar.
13, 2013. Final Act. 5.
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Claims 26, 27, 29, 31, 33, 34, 36, and 38 are rejected under 35 U.S.C.
§ 103 as unpatentable over Pardo and Jacques (US 6,041,931, issued Mar.
28, 2000). Final Act. 9.

ANALYSIS
Indefiniteness
Appellant does not contest the rejection of claims 26, 31, and 33 under
35 U.S.C. § 112(b) as being indefinite. Final Act. 5. Accordingly, we
sustain the rejection.
Written Description
Claims 25 and 38 both recite “two or more end walls” and “two or
more side walls.” Appeal Br. 22, 26 (Claims App.) (emphasis added). The
Examiner finds that Appellant’s original Specification and drawings disclose
only two end walls and two side walls. Final Act. 4; Ans. 5. The Examiner
interprets “or more” as encompassing three, four, five, etc., each of which is
unsupported. Final Act. 4. Thus, the Examiner determines that claims 25
and 38, and claims 26–31 depending from claim 25, fail to comply with the
written description requirement and contain new matter. Id.
The test for sufficiency under the written description requirement of
35 U.S.C. § 112 “is whether the disclosure of the application relied upon
reasonably conveys to those skilled in the art that the inventor had
possession of the claimed subject matter as of the filing date.” Ariad
Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc). To have “possession,” “the specification must . . . show that the
inventor actually invented the invention claimed.” Id. “The purpose of the
written description requirement is to prevent an applicant from later
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asserting that he invented that which he did not; the applicant . . . is therefore
required to ‘recount his invention in such detail that his future claims can be
determined to be encompassed within his original creation.’” Amgen Inc. v.
Hoechst Marion Roussel Inc., 314 F.3d 1313, 1330 (Fed. Cir. 2003) (citing
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1561 (Fed. Cir. 1991)).
Appellant asserts that “[t]he goal of section 112(a) is to ensure
complete disclosure of the invention. The expansion of the claims to include
embodiments where there may be more than two end walls does not deprive
the public of a full disclosure of the invention.” Appeal Br. 14 (emphasis
added). According to Appellant, “[t]he use of an ‘or more’ limitation is
common to ensure that the claims encompass obvious variations of the
claimed invention. The use of such a limitation does not require disclosure
of an infinite number of elements in order to fulfill disclosure requirements.”
Id. (emphasis added). Appellant also asserts, “[t]he [E]xaminer appears to
require disclosure of an infinite number of sides in order to fulfill the
statutory requirements.” Id. at 14–15.
Appellant cites to page 7, lines 4–8 of the Specification, and Figures
1, 4, and 7 of the drawings, as support for the claimed “two or more end
walls” and “two or more side walls.” Appeal Br. 2. This passage states:
The container 10 comprises two sidewalls 12, two
endwalls 14 and a bottom wall 16 as shown in Figures 1 to 3,
which are preferably integrally formed together, such as
through injection moulding. The lidded seafood container 10 is
shown in the drawings as having a rectangular shape, however,
other shapes, such as quadrilateral or rounded shapes, are
contemplated.
Spec. 7, ll. 4–8 (emphasis added). This passage expressly describes the
rectangular-shaped container 10 shown in Figure 1 as having two sidewalls
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12 and two endwalls 14. Appellant does not explain how this container
comprises more than two sidewalls and two endwalls, as encompassed by
the claim limitations. Nor does Appellant explain how the containers shown
in Figures 4 and 7 have more than two sidewalls and two endwalls. As for
the “other shapes,” the Examiner notes that “[a] quadrilateral only has two
side walls and two end walls, and a rounded shape, technically, only has one
continuous wall.” Ans. 6. We agree with the Examiner that the disclosure
cited by Appellant does not support the claimed “two or more end walls”
and “two or more side walls.”
Also, claims 25 and 38 are open-ended as to the number of end walls
and side walls that the seafood storage vessel can comprise. However, “the
purpose of the written description requirement is to ensure that the scope of
the right to exclude, as set forth in the claims, does not overreach the scope
of the inventor’s contribution to the field of art as described in the patent
specification.” Ariad, 598 F.3d at 1353–54 (citation omitted). We agree
with Appellant that “the use of such a limitation [i.e., “or more”] does not
require disclosure of an infinite number of elements in order to fulfill
disclosure requirements.” Appeal Br. 14. However, Appellant does not
identify disclosure of any number of elements greater than two. Moreover,
it is unclear, for example, how a container could have more than two end
walls, and if it did have more than two end walls, how an end wall would be
distinguished from a side wall (e.g., does a pentagon have two side walls and
three end walls or three side walls and two end walls?).
Further, to the extent Appellant concedes that the original disclosure
does not disclose any container having more than two sidewalls and two
endwalls, but, nonetheless, contends that such containers are “obvious
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variations of the claimed invention” (id.), and, as such, are not required to be
disclosed according to the written description requirement, we disagree. To
the contrary, “[a] disclosure . . . that merely renders the later-claimed
invention obvious is not sufficient to meet the written description
requirement; the disclosure must describe the claimed invention with all its
limitations.” Tronzo v. Biomet, Inc., 156 F.3d 1154, 1158 (Fed. Cir. 1998).
Appellant also contends that “[a] search of the USPTO for issued
patents with claims that include ‘or more’ shows nearly one and a half
million results” and “[i]t is difficult to believe that nearly fifteen percent of
all issued patents are invalid for failing to meet the requirements of section
112(a).” Appeal Br. 15.
This contention is unpersuasive. As the Examiner explains, “the
[E]xaminer did not state that [A]ppellant cannot use ‘or more’” (Ans. 6);
rather, “[t]he issue of the rejection is that [A]ppellant has no support for
more than two end walls and more than two side walls” (id. at 7). Even if
patents that include claims reciting the phrase “or more” have issued, this
does not, by itself, constitute evidence of Examiner error in this appeal.
Thus, we sustain the rejection of claims 25–31 and 38 under the
written description requirement of 35 U.S.C. § 112(a).
Objections to Specification and Drawings
The Examiner objects to the Specification because “the innermost end
wall surface, the outermost end wall surface, the innermost side wall surface,
and the outermost side wall surface,” as recited in claims 25 and 38, and “the
outermost surface, the outside surface, the innermost surface, and the inside
surface,” as recited in claim 32, are not described in the Specification. Final
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Act. 3. The Examiner also objects to the drawings as not illustrating these
same claimed elements. Id. at 2.
Appellant contests the objections to the Specification and drawings.
Appeal Br. 11–13. In response, the Examiner maintains them, stating “an
objection is petitionable, and a rejection is appealable.” Ans. 4–5.
We agree with the Examiner that, ordinarily, an objection is
reviewable by petition under 37 C.F.R. § 1.181, whereas a rejection is
appealable to the Patent Trial and Appeal Board. When the same issue of
new matter is the subject of both an objection and a rejection, however, the
objection is appealable. MPEP § 2163.06, II. Review of New Matter
Objections And/Or Rejections (9th Ed., Rev. 8, January 2018). But here, the
objections to the Specification and drawings do not pertain to the same issue
of new matter as the rejection under 35 U.S.C. § 112(a). Accordingly, these
objections are not appealable.
Anticipation by Pardo
Appellant argues claims 25 and 32 together and does not provide
separate argument for claims 28, 30, 35, and 37. Appeal Br. 15–19. We
select claim 25 to decide the appeal as to this rejection, and claims 28, 30,
32, 35, and 37 stand or fall with claim 25. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner finds that Pardo discloses, inter alia, a discharge
channel formed from an inlet orifice (collecting opening 7) in a lower half of
the innermost side wall surface, an outlet orifice (at cavity 12) in an upper
half of the outermost side wall surface (“area of ref. 12 at the edge and the
outside of the container are considered outermost because they are exposed
or at the outside opposite the interior”), and a channel (first section 8)
connecting the inlet orifice to the outlet orifice, whereby water contaminated
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by waste from seafood flows into the inlet orifice, through the discharge
channel, and exits the container at the outlet orifice. Final Act. 6 (citing
Pardo ¶ 19), 7 (annotated Pardo, Fig. 3c).
Appellant contends that the recited location of the “water outlet”
distinguishes the claimed subject matter over Pardo. Appeal Br. 15.
Appellant contends that Pardo discloses that water from an internal cavity
may exit the container if the water passes over an internal weir contained
within a container wall and ultimately exits the container at its bottom,
flowing downward. Id. at 16. In support, Appellant reproduces paragraph 8
and claim 1 of Pardo (id. at 7–8), and provides annotated Figures 3b–3d of
Pardo depicting the flow direction of water in the container (id. at 9).
Paragraph 8 of Pardo describes the container 1 as including a first section 8
with a collecting opening 7 at the bottom of the container, a second section 9
in communication with the first section 8, thereby allowing water circulation
following an inverted U trajectory between these sections (annotated Fig.
3b), and a third section 10 in communication with the second section 9 and
integrated into the base 3 of container 1 and having a discharging opening 11
therein (annotated Fig. 3d). In contrast, Appellant contends, the claimed
invention “directly discharg[es] overflow water through outlets mounted in
the outermost surface of the upper portion of the container.” Id. at 16.
Appellant’s contentions are not persuasive. Paragraph 19 of Pardo
cited by the Examiner states:
Likewise, the upper part of the first section (8) and of the
second section (9) opens to the outside by means of a cavity
(12) which allows ventilating the circulation line (6) and the
cleaning thereof. This ventilation is also assured when the
containers are stacked since the base (3) of the container (1) is
configured for partially covering the cavity (12) of the container
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(1) immediately underneath. This also allows the depuration
water to overflow the cavity (12) to go into the container (1)
immediately underneath, provided that the level of the
container (1) reaches the limit values caused by an excessive
flow rate.
Pardo ¶ 19 (emphasis added). Appellant does not explain persuasively why
Pardo’s cavity 12 cannot be considered “an outlet orifice,” as claimed.
Claim 25 does not recite that the outlet orifice has any particular structure
that distinguishes it from Pardo’s cavity 12. And, Appellant does not direct
us to any disclosure that indicates clearly the claimed outlet orifice has some
particular meaning that distinguishes over Pardo’s cavity. Indeed, we are
unable to find the term “orifice” described in the Specification. Rather,
Appellant’s Specification simply references channel inlet 50 and channel
outlet 54. To the extent Appellant is attempting to assert an ordinary
meaning of “orifice” that requires some sort of restriction, that is not
consistent with the disclosure in Appellant’s Specification, as explained
above. Further, Appellant does not explain persuasively why the described
overflowing of cavity 12 cannot be considered water “exit[ing] the container
at the outlet orifice,” as also claimed. Simply stated, we are not apprised of
any structure required by the recited “orifice,” other than that required for
water to flow through and exit, which is consistent with the disclosure in
Appellant’s Specification.
Appellant also asserts the Examiner contends that “Pardo discloses
interior and exterior outlets within a given wall,” and provides an annotated
version of Figure 3b of Pardo with the annotations “interior” and “exterior.”
Appeal Br. 19.
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Initially, we note claim 25 does not recite the terms “interior” and
“exterior.” Accordingly, Appellant’s contentions are not commensurate
with the claim language.
We agree with the Examiner that Appellant uses a different
interpretation of Pardo than the Examiner has used as to the location of the
innermost and outermost surfaces. Ans. 8. According to the Examiner’s
findings, the right-most surface shown in Appellant’s annotated Figure 3b of
Pardo corresponds to an endwall. This is evident from the Examiner’s
finding that, in Figure 3a of Pardo, “the end walls are the walls on the top
and bottom, for example, the top wall is right under [reference number] 18.”
Final Act. 6. As Figure 3b in Pardo is a sectional view according to section
A-A of Figure 3a (Pardo, col. 4, ll. 25–26), the Examiner finds that the left-
most and right-most surfaces shown in Figure 3b correspond to the claimed
endwalls. The Examiner provides a modified version of Figure 3c of Pardo
with the annotations “innermost side wall surface,” “outermost side wall
surface,” and “channel.” Final Act. 7; Ans. 8. As Figure 3c in Pardo is a
sectional view according to section B-B of Figure 3a (Pardo, col. 4, ll. 27–
28), the Examiner’s position is that the left-most surface shown in Figure 3c,
that is, “outermost side wall surface,” corresponds to a claimed side wall.
Appellant does not apprise us of error in the Examiner’s interpretation as to
the locations of the “innermost side wall surface,” “outermost side wall
surface,” and “channel” in Figure 3c of Pardo.
We sustain the rejection of claim 25, and claims 28, 30, 32, 35, and
37, which fall with claim 25, as anticipated by Pardo.
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Obviousness over Pardo and Jacques
Appellant presents argument only for claim 38.2 Appeal Br. 19–20.
We select claim 38 to decide the appeal as to this rejection, and claims 26,
27, 29, 31, 33, 34, and 36 stand or fall with claim 38.
The Examiner finds that Pardo does not disclose a plurality of
drainage slots having all the limitations of the drainage slots recited in claim
38. Final Act. 9–10. The Examiner relies on Jacques as teaching a plurality
of drainage slots with these limitations. Id. at 10.
Appellant concedes that Jacques discloses drainage slots, but contends
that Jacques fails to disclose a discharge channel as recited in claim 38.
Appeal Br. 19–20. Thus, Appellant contends, the combination of Pardo and
Jacques “fails to disclose a discharge channel that directly discharges
overflow water through outlets mounted in the outermost surface of the
upper portion of the container.” Id. at 20.
These contentions are unpersuasive. As discussed above for the
anticipation rejection of claim 25, we are not apprised of error in the
Examiner’s finding that Pardo discloses a discharge channel as identically
recited in claim 38. For claim 38, Pardo, not Jacques, is relied on to teach a
discharge channel. Thus, we sustain the rejection of claim 38, and claims
26, 27, 29, 31, 33, 34, and 36, as unpatentable over Pardo and Jacques.

2 This is consistent with the listing of the “issues to be reviewed on appeal,”
which includes whether the Examiner erred in rejecting claim 38 under this
ground. Appeal Br. 8–9.
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DECISION SUMMARY
In summary:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
26, 31, 33 112(b) Indefiniteness 26, 31, 33
25–31, 38 112(a) Written description 25–31, 38
25, 28, 30,
32, 35, 37
102(a)(1)/(a)(2) Pardo 25, 28, 30,
32, 35, 37

26, 27, 29,
31, 33, 34,
36, 38
103 Pardo, Jacques 26, 27, 29,
31, 33, 34,
36, 38

Overall
Outcome
25–38

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED