William Boroughf

Patent Trials and Appeals Board

Oct 2, 2019

13538412 - (D) (P.T.A.B. Oct. 2, 2019)

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.
13/538,412 06/29/2012 William Boroughf ENVI-100US 3785
13173 7590 10/02/2019
Blue Filament Law
700 E. Maple Road
Suite 450
Birmingham, MI 48009
EXAMINER
ACKUN, JACOB K
ART UNIT PAPER NUMBER
3736
NOTIFICATION DATE DELIVERY MODE
10/02/2019 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):
ag@bluefilamentlaw.com
ap@bluefilamentlaw.com
patentdocketing@bluefilamentlaw.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM BOROUGHF
____________

Appeal 2018-002722
Application 13/538,412
Technology Center 3700
____________

Before EDWARD A. BROWN, BENJAMIN D. M. WOOD, and
BRANDON J. WARNER, Administrative Patent Judges.

WARNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
William Boroughf (“Appellant”) appeals under 35 U.S.C. § 134(a)
from the Examiner’s decision rejecting claims 1–3, 5, 6, 12, 13, 17, and
21–24. Appeal Br. 2. Claims 4, 11, 14–16, and 18–20 have been
withdrawn. Id. We have jurisdiction over the appeal under 35 U.S.C.
§ 6(b).
We AFFIRM.

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CLAIMED SUBJECT MATTER
Appellant’s disclosed invention “in general relates to the collection,
storage and disposal of used and spent liquids, and in particular to a
disposable oil change kit for servicing engines.” Spec. ¶ 2. Claim 1,
reproduced below, is the sole independent claim and is representative of the
subject matter on appeal.
1. A liquid disposal tool for the collection and disposal of
liquids comprising:
a container with a bottom portion and a set of walls;
a peat moss absorbent resting on said bottom portion
within said walls, said absorbent configured to collect said
liquid;
a top cover diffuser;
an insert tray overlaying said absorbent, said insert tray
contoured with a series of rows of conical depressions
protruding downward into said absorbent layer, and a series of
flat top protrusions in the series of rows, said series of flat top
protrusions extending upward from said insert tray with a series
of gaps that define the series of rows between the flat top
protrusions; and
wherein said flat top protrusions are wider than said gaps,
where said gaps serve as channels to distribute the liquid or
hydrocarbon materials, and said flat top protrusions serve as
supports and as attachment points for said top cover diffuser.

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EVIDENCE
The Examiner relied on the following evidence in rejecting the claims
on appeal:1
Kahler US 5,716,840 Feb. 10, 1998
Berrigan US 5,763,083 June 9, 1998
MacQuoid US 2003/0121802 A1 July 3, 2003
Hayakawa US 6,793,092 B1 Sept. 21, 2004
Walker US 2010/0043717 A1 Feb. 25, 2010
Hurwitz US 2010/0136128 A1 June 3, 2010
St. Pierre US 2011/0174740 A1 July 21, 2011
Pearce US 2011/0253930 A1 Oct. 20, 2011
Hunter US 2012/0311972 A1 Dec. 13, 2012
Simmons US 8,479,945 B1 July 9, 2013

REJECTIONS
The following rejections are before us for review:
I. Claims 1–3, 5, 6, 12, 13, 17, and 21–24 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Final Act. 3–4; see also id.
at 2 (objecting to proposed amendments to the drawings and the
Specification for the same issues regarding lack of original
disclosure).

1 We note that the latest prior art rejection of record, from which this
appeal is taken, is based on Simmons; however, the remaining references
listed have been previously made of record in this application and are cited
by the Examiner as exemplary evidence that certain features or arrangements
specified in the claims were known in the art at the time of the invention.
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II. Claims 1–3, 5, 6, 12, 13, 17, and 21–24 stand rejected under
35 U.S.C. § 112, second paragraph, as being indefinite. Id. at 4.
III. Claims 1–3, 5, 6, 12, 13, 17, and 21–24 stand rejected under
35 U.S.C. § 103(a) as being unpatentable over Simmons. Id.
at 5–6.

ANALYSIS
Rejection I – Written Description
The Examiner finds that various claim recitations lack written
description support, as they “were not described in applicant’s original
specification in such a way as to show possession of the claimed invention
by applicant (including some that are not described in the original
specification at all).” Final Act. 3. In particular, with respect to the recited
insert tray overlaying the absorbent, the Examiner identifies the current
limitation “said insert tray [being] contoured with a series of rows of conical
depressions protruding downward into said absorbent layer,” as presently
recited in independent claim 1, to lack written description. See id.
The fundamental factual inquiry for sufficient written description is
whether Appellant’s Specification conveys with reasonable clarity to those
skilled in the art that, as of the filing date sought, Appellant was in
possession of the invention as presently claimed. See Ariad Pharms., Inc., v.
Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc); Vas-Cath
Inc. v. Mahurkar, 935 F.2d 1555, 1562–64 (Fed. Cir. 1991).
Appellant characterizes the proposed additions to the disclosure as an
attempt to “show with further clarity,” or to “describe in further detail,”
features now recited in the claims. Appeal Br. 9, 13. Specifically, Appellant
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acknowledges that Figure 8 was proposed to be “amended to show the
feature of the depressions 166 protruding into the absorbent 140,” asserting
that this feature “was described throughout the original specification.” Id.
at 9. In support of this assertion, Appellant directs us to Paragraph 26, but
this portion of the disclosure relates to a non-elected sub-species (Group 2);
as the Examiner correctly notes, Appellant does not identify disclosure of
this feature in the context of the elected sub-species (Group 3). See id.;
Ans. 6–7; see also Ans. 4 (referencing Appellant’s election made without
traverse).
We are unpersuaded by Appellant’s characterization. As reproduced
below, original Figure 8 depicts tray insert 160 overlaying absorbent 140
(contained within under tray 138), with depressions (unnumbered in this
figure, but understood to be the lowermost “points” of tray insert 160)
spaced above absorbent 140.

Appellant’s original Figure 8, above, does not disclose the identified
limitation of the insert tray being “contoured with a series of rows of conical
depressions protruding downward into said absorbent layer,” as now recited
in claim 1.
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In contrast, as reproduced below, proposed amended Figure 8 depicts
a different embodiment of tray insert 160′′ shown to be partially overlaying
absorbent 140 (contained within under tray 138), with portions of this tray
insert now protruding downward into absorbent 140.

Appellant’s proposed amendments to Figure 8, above, which
admittedly appear to depict the identified limitation now recited in claim 1,
are not supported in the original disclosure, as the Examiner states.
Although we appreciate that one of ordinary skill in the art may
understand from the original disclosure that the amount of absorbent in the
tray may be varied (albeit from the context of a non-elected sub-species), the
test for sufficient disclosure is not what may have been obvious in light of
the original disclosure, but what was actually disclosed. In this way, the
written description requirement of the first paragraph of 35 U.S.C. § 112
demands a fairly exacting description of the claimed invention in the
Specification. See Ariad, 598 F.3d at 1352 (“a description that merely
renders the invention obvious does not satisfy the requirement”); see also
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MPEP § 2163 (“The Federal Circuit has pointed out that, under United
States law, a description that merely renders a claimed invention obvious
may not sufficiently describe the invention for the purposes of the written
description requirement of 35 U.S.C. [§] 112.”) (citing Regents of the Univ.
of Cal. v. Eli Lilly & Co., 119 F.3d 1559, 1567 (Fed. Cir. 1997)).
In short, because we are not apprised of error in the Examiner’s
finding that Appellant’s original Specification does not disclose the
identified features now recited in the independent claim, we sustain the
rejection based on lack of written description.

Rejection II – Indefiniteness
The Examiner also determines that the unsupported claim limitations
(as in Rejection I above) also render the claims indefinite because “the
limitations added to the claims cannot be properly interpreted.” Final Act. 4.
Although we agree with the Examiner that the claim recitations are
not adequately supported by the original disclosure, as discussed in
Rejection I above, the requirement for definiteness is separate and distinct.
The Examiner does not explain how any limitations would be unclear to one
of ordinary skill in the art—indeed, the ability to reasonably discern the
metes and bounds of the claims is a necessary prerequisite to a finding that
they are unsupported by the original disclosure.
Accordingly, because we are able to define the scope of the claims,
we do not sustain the rejection based on indefiniteness.

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Rejection III – Obviousness over Prior Art
The Examiner determines that incorporation of known design choices
with Simmons renders obvious the claimed subject matter. See Final
Act. 5–6; Ans. 13–14. In arguing against the prior art rejection, Appellant
relies on an asserted deficiency in Simmons alone as sufficient evidence to
support that some recited limitations (e.g., the absorbent being peat moss
and “perhaps the depressions protruding downwardly into the absorbent
layer” (Appeal Br. 16)) are not expressly shown in Simmons. See Appeal
Br. 15–17. More generally, Appellant asserts that the rejection is deficient
because “no evidence is of record to support the findings” related to these
identified limitations. Id. at 15.
We are unpersuaded by Appellant’s assertion, which ignores the
evidence of various other prior art references made of record in this case.
See note 1 supra. In other words, contrary to Appellant’s assertion, the
Examiner has provided evidence in the record for these findings sufficient to
put Appellant on notice as to the factual basis for the conclusion of
obviousness. For example, peat moss being a suitable absorbent was
disclosed in at least Hunter, Pearce, MacQuoid, and Kahler (see Ans. 14),
and at least substantially filling the interior of a housing for collecting oil
with an oil absorbent material was disclosed in at least Kahler and
Hayakawa (see Final Act. 5–6; Ans. 14) such that doing so in the structure
of Simmons would result in the depressions protruding downwardly into the
absorbent layer.
In short, because Appellant’s assertions do not demonstrate any lack
of evidentiary support in the record for the Examiner’s conclusion of
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obviousness, we are not apprised of error and we sustain the rejection based
on the prior art.

DECISION
We AFFIRM the Examiner’s decision rejecting claims 1–3, 5, 6, 12,
13, 17, and 21–24 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
We REVERSE the Examiner’s decision rejecting claims 1–3, 5, 6, 12,
13, 17, and 21–24 under 35 U.S.C. § 112, second paragraph, as being
indefinite.
We AFFIRM the Examiner’s decision rejecting claims 1–3, 5, 6, 12,
13, 17, and 21–24 under 35 U.S.C. § 103(a) as being unpatentable over
Simmons.
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