Case: 21-1599 Document: 26 Page: 1 Filed: 02/28/2022
NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE: TONIA WALSTAD MILLER,
Appellant
______________________
2021-1599
______________________
Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 13/218,874.
______________________
Decided: February 28, 2022
______________________
MICHAEL ERIC ATTAYA, Cesari and McKenna, LLP,
Boston, MA, argued for appellant. Also represented by
DUANE H. DREGER.
MARY L. KELLY, Office of the Solicitor, United States
Patent and Trademark Office, Alexandria, VA, argued for
appellee Andrew Hirshfeld. Also represented by THOMAS
W. KRAUSE, MONICA BARNES LATEEF, FARHEENA YASMEEN
RASHEED.
______________________
Before MOORE, Chief Judge, DYK and CUNNINGHAM,
Circuit Judges.
CUNNINGHAM, Circuit Judge.
Case: 21-1599 Document: 26 Page: 2 Filed: 02/28/2022
2 IN RE: MILLER
Tonia W. Miller appeals from the final decision of the
Patent Trial and Appeal Board (“Board”) affirming the re-
jection of claims 1 and 24–26 of U.S. Patent Application
No. 13/218,874 (“the ’874 Patent Application”) for obvious-
ness.
At issue in this case is whether the Board erred in find-
ing the term “emergency” to be an intended use rather than
a structural limitation of the claimed “water store,” and
whether the Board made a sufficient administrative record
as to why Ms. Miller’s new evidence was insufficient to
overcome the determination of obviousness. We hold that
the Board did not err and did create a sufficient adminis-
trative record. Accordingly, we affirm.
I. BACKGROUND
A. The ’874 Patent Application
The ’874 Patent Application is entitled “Furniture Hav-
ing Load-Bearing or Non-Load Bearing Structures for Stor-
age of Water or Other Material.” It relates to furniture
incorporating water storage structures which provide an
emergency water supply that is inconspicuous and aes-
thetically acceptable. J.A. 2, 74–75. The specification de-
scribes the importance of “preparation for possible
emergency situations such as natural disasters . . . [by]
keep[ing] a supply of potable water stored in a readily ac-
cessible location.” J.A. 74.
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IN RE: MILLER 3
The ’874 Patent Application discloses a variety of em-
bodiments of the invention, including tables and chairs.
J.A. 93–118. Figure 10 shows one such embodiment:
J.A. 112.
Claim 1, the only independent claim at issue in this ap-
peal, is directed to the embodiment of Figure 10. It recites:
A table having integrated storage capacity com-
prising:
a removable tabletop which is supported by
a load-bearing frame;
said load-bearing frame defining a volume
in which an emergency water store is dis-
posed, said volume entirely overlayed by
said tabletop, said emergency water store
including a plurality of reusable storage
containers substantially identical in size
and shape, each of which includes a spout;
and
one or more load-bearing structures for
supporting said tabletop, load-bearing
frame and emergency water store above a
floor surface.
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4 IN RE: MILLER
J.A. 2, 597 (with limitation at issue in this appeal empha-
sized).
B. The Prosecution History
The ’874 Patent Application was filed on August 26,
2011. J.A. 68–82, 85. The Examiner rejected claims 1 and
24–26 for obviousness over
U.S. Patent No. 5,060,580
(“Shaw”) and another prior art reference, Bylo, which is not
at issue in the present appeal. J.A. 396–98. The Board
reversed but did not reach the issue of the proper interpre-
tation of the limitation “emergency water store.” J.A. 441–
45. Subsequently, the Examiner reopened prosecution
with a non-final office action rejecting claims 1 and 24–26
for obviousness based on Shaw in view of U.S. Patent Pub.
No. 2003/0173328 A1 (“Herckner”). J.A. 472–76.
Shaw is directed to a storage table that protects food
and picnic supplies from insects and pests when dining,
while also providing easy access to the food stuffs and a
surface for eating. J.A. 13, 17–18 at col. 4, l. 54–col. 5, l.
11. Shaw’s table includes an internal storage area that
may be used to store “any articles, such as picnic supplies,
food stuffs and ice.” J.A. 17 at col. 3, ll. 8–9.
Herckner is directed to a “liquid storage bottle . . . with
a generally cylindrical liquid storage chamber and an inte-
gral handle” that facilitates cleaning. J.A. 19, 32–33.
Herckner’s bottles are of various sizes and shapes, with the
exemplary embodiment of the invention described with ref-
erence to a generally cylindrical five-gallon water bottle.
J.A. 31 ¶ 24.
Ms. Miller petitioned for review of the decision to reo-
pen prosecution, along with withdrawal of the office action
reopening prosecution and either issuance of a Notice of Al-
lowance or assignment of a different examiner to the ’874
Patent Application. J.A. 479–90. Her petition was denied.
J.A. 491–97. Ms. Miller then submitted new evidence that
she argued was “evidence of knowledge in the art of
Case: 21-1599 Document: 26 Page: 5 Filed: 02/28/2022
IN RE: MILLER 5
emergency preparedness of a structure that is referred to
as an ‘emergency water store,’” Appellant’s Reply Br. 4, in-
cluding (1) a photograph of a WWII military building des-
ignated as an “emergency water store,” (2) dictionary
definitions for “food” and “foodstuff,” and (3) two U.S. pa-
tents that use the term “water store” to refer to an ambu-
latory transport system and a supply carrier system,
respectively. J.A. 508–85; Appellant’s Br. 18. Nonetheless,
the Examiner maintained the rejection. J.A. 607–13. Ms.
Miller then appealed to the Board for a second time. J.A.
671–756. The Board determined that the term “emer-
gency” merely recites how the water store is used and con-
cluded that “emergency water store” encompasses Shaw’s
internal storage area. J.A. 4–5. The Board affirmed the
rejection over Ms. Miller’s arguments regarding the proper
interpretation of the limitation “emergency water store.”
J.A. 1–5.
Ms. Miller timely appeals to this court. We have juris-
diction pursuant to
28 U.S.C. § 1295(a)(4)(A).
II. DISCUSSION
We review de novo the Board’s ultimate claim construc-
tions. In re NTP, Inc.,
654 F.3d 1268, 1273 (Fed. Cir. 2011).
“We review the Board’s ultimate determination of obvious-
ness de novo and its underlying factual determinations for
substantial evidence.” PersonalWeb Techs., LLC v. Apple,
Inc.,
917 F.3d 1376, 1381 (Fed. Cir. 2019) (internal quota-
tion marks omitted). Substantial evidence is “less than the
weight of the evidence but more than a mere scintilla of
evidence.” In re Mouttet,
686 F.3d 1322, 1331 (Fed. Cir.
2012) (citation omitted).
Under
35 U.S.C. § 103, a patent may not be obtained if
the differences between the subject matter sought to be pa-
tented and the prior art make the subject matter as a whole
Case: 21-1599 Document: 26 Page: 6 Filed: 02/28/2022
6 IN RE: MILLER
obvious to a person with ordinary skill in the art. 1 An in-
vention is likely obvious when it merely combines familiar
elements according to known methods to yield nothing
more than predictable results. KSR Int’l Co. v. Teleflex
Inc.,
550 U.S. 398, 415–16 (2007). Additionally, while the
Board must provide an explanation for its decisions, “‘[t]he
amount of explanation needed to meet the governing legal
standards—to enable judicial review and to avoid judicial
displacement of agency authority—necessarily depends on
context.’ Indeed, ‘[a] brief explanation may do all that is
needed if, for example, the technology is simple and famil-
iar and the prior art is clear in its language and easily un-
derstood.’” Paice LLC v. Ford Motor Co.,
881 F.3d 894, 905
(Fed. Cir. 2018) (quoting Pers. Web Techs., LLC v. Apple,
Inc.,
848 F.3d 987, 993 (Fed. Cir. 2017)); see also In re War-
saw Orthopedic, Inc.,
832 F.3d 1327, 1335 (Fed. Cir. 2016)
(requiring that the Board “make the necessary findings
and . . . provide an administrative record showing the evi-
dence on which the findings are based, accompanied by the
agency’s reasoning in reaching its conclusions”) (quoting In
re Lee,
227 F.3d 1338, 1342 (Fed. Cir. 2002) (italicization
omitted)).
On appeal, Ms. Miller argues that the Board miscon-
strued the term “emergency” of the claimed “water store”
and failed to create a sufficient administrative record in re-
jecting Ms. Miller’s new evidence. We address each issue
in turn.
1 Because Ms. Miller’s application never contained a
claim having an effective filing date on or after March 16,
2013, or a reference under
35 U.S.C. §§ 120, 121, or 365(c)
to any patent or patent application that ever contained
such a claim, we consider the claimed invention under pre-
AIA § 103. Pub. L. No. 112–29, § 3(n)(1),
125 Stat. 284, 293
(2011).
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IN RE: MILLER 7
A. Construction of “Emergency Water Source”
Ms. Miller asserts that the Board erred when it
adopted the Examiner’s construction of “emergency” as an
intended use. She argues that the Board’s construction is
inconsistent with the specification and an unreasonably
broad claim interpretation. Appellant’s Br. 9. We disagree.
The term “emergency” is an intended use and not a struc-
tural limitation of the claimed “water store.”
For this application, the claims are given their broad-
est reasonable interpretation during patent examination.
See, e.g., Personalized Media Commc’ns, LLC v. Apple Inc.,
952 F.3d 1336, 1340 (Fed. Cir. 2020); In re Bigio,
381 F.3d
1320, 1324 (Fed. Cir. 2004) (“[T]he PTO gives a disputed
claim term its broadest reasonable interpretation during
patent prosecution.”). The broadest reasonable interpreta-
tion must be consistent with the plain meaning of the
words of the claim, unless such meaning would be incon-
sistent with the specification and prosecution history. See,
e.g., Trivascular, Inc. v. Samuels,
812 F.3d 1056, 1062 (Fed.
Cir. 2016).
The Board correctly construed “emergency” to convey
an intended use rather than a structural limitation. No
arguments have been made to suggest what possible struc-
tural characteristics would differentiate an emergency wa-
ter store and a non-emergency water store. See, e.g., In re
Fought,
941 F.3d 1175, 1178–79 (Fed. Cir. 2019) (holding
that the term “travel trailer” was a structural limitation of
the claims rather than a statement of intended use because
it described the towability and living area arrangement of
a type of recreational vehicle). Indeed, Ms. Miller’s counsel
conceded in oral argument that “emergency” confers no
structural characteristic at all. Oral Arg. at 7:35–8:01,
available at https://oralarguments.cafc.uscourts.gov/de-
fault.aspx?fl=21-1599_11012021.mp3 (Q: “Does the appli-
cation concede that there is no structural difference
between an emergency water store and a water store?” . . .
Case: 21-1599 Document: 26 Page: 8 Filed: 02/28/2022
8 IN RE: MILLER
A: “The notion of the emergency water store is [] not de-
scribed as a unique structural aspect.”); see also J.A. 843
¶ 55 (“[W]ater or other liquid stored in storage container
1212 is generally accessible for use at any time and need
not be considered merely an emergency supply.”). Regard-
less of the importance of storing potable water in case of an
emergency, nothing in the specification compels a contrary
result. See generally J.A. 73–82. Accordingly, we agree
with the Board’s construction of “emergency” as a state-
ment of intended use which does not limit the structure.
Having upheld the Board’s construction of “emergency
water store,” we affirm the Board’s determination of obvi-
ousness over Shaw in view of Herckner. “It is well settled
that the recitation of a new intended use for an old product
does not make a claim to that old product patentable.” In
re Schreiber,
128 F.3d 1473, 1477 (Fed. Cir. 1997). And the
combination of Shaw and Herckner teach the structure of
claim 1. On appeal, Ms. Miller does not challenge that
Shaw teaches every limitation of claim 1 of the ’874 Patent
Application except an emergency water store comprising a
plurality of identical storage containers each with a spout.
Appellant’s Br. 12–13; Appellee’s Br. 13. And she does not
challenge that Herckner discloses water bottles having
substantially identical size and shape and a spout. Appel-
lant’s Br. 12–13; Appellee’s Br. 13. We find no error in the
Board’s obviousness determination regarding claim 1 of the
’874 Patent Application. 2
2 The Board did not rely on impermissible hindsight
in finding so. Ms. Miller argues that Herckner’s water bot-
tles can only be equated to the claimed “emergency water
store” through hindsight and that neither Shaw nor Herck-
ner use the precise term “emergency water store.” Appel-
lant’s Br. 13; Appellant’s Reply Br. 5–6. We are not
persuaded. Not only is “emergency” not a structural limi-
tation that must be found in the prior art, but prior art
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IN RE: MILLER 9
We are also unpersuaded by Ms. Miller’s assertion of
“divergent claim mapping” between the Examiner’s An-
swer and the second Board decision. Ms. Miller contends
that the Examiner and the Board inconsistently mapped
Shaw’s “internal storage area” to the claim language “said
load-bearing frame defining a volume in which an emer-
gency water store is disposed.” Appellant’s Br. 14–15; Ap-
pellant’s Reply Br. 8. Ms. Miller also argues that Shaw’s
divergently mapped “internal storage area” cannot be both
a “volume in which an emergency water store is disposed”
and an “emergency water store.” Appellant’s Reply Br. 9.
Ms. Miller is correct that all claim limitations must be
taught or suggested by the prior art to establish
references need not parrot precisely the same words as in
the claim to support an obviousness determination. See,
e.g., Beckson Marine, Inc. v. NFM, Inc.,
292 F.3d 718, 727
(Fed. Cir. 2002) (“[O]bviousness does not require the prior
art to reach expressly each limitation exactly. Rather, ob-
viousness may render a claimed invention invalid where
the record contains a suggestion or motivation to modify
the prior art teaching to obtain the claimed invention.”); see
also Microsoft Corp. v. Biscotti, Inc.,
878 F.3d 1052, 1070
(Fed. Cir. 2017) (determining that the Board applied the
correct legal standard in not requiring “word-for-word sim-
ilarity or perfection” and instead considering “whether a
POSA would ‘at once envisage’ the combination of the
claimed invention”). Moreover, Ms. Miller first raised her
hindsight argument in a single footnote in her opening
brief. Appellant’s Br. 13 n.6. But “arguments raised in
footnotes are not preserved.” SmithKline Beecham Corp. v.
Apotex Corp.,
439 F.3d 1312, 1320 (Fed. Cir. 2006); see also
Fuji Photo Film Co. v. Jazz Photo Corp.,
394 F.3d 1368,
1375 n.4 (Fed. Cir. 2005) (finding that an argument raised
in a footnote in an opening cross-appeal brief and then de-
veloped more fully in the reply brief was not properly
raised).
Case: 21-1599 Document: 26 Page: 10 Filed: 02/28/2022
10 IN RE: MILLER
obviousness of a claimed invention. See, e.g., In re Royka,
490 F.2d 981, 984 (C.C.P.A. 1974) (“It is elementary that to
support an anticipation rejection, all elements of the claim
must be found in the reference.”); In re Gulack,
703 F.2d
1381, 1385 n.8 (Fed. Cir. 1983) (extending Royka to deter-
mining obviousness). But we need not parse the claim lan-
guage into multiple physical structures and manufacture
divergence between the Examiner’s Answer and the second
Board decision. The “volume in which an emergency water
store is disposed” merely modifies the “load-bearing frame”
element but does not identify additional structure or sepa-
rate functions. J.A. 2, 597; cf. Becton, Dickinson & Co. v.
Tyco Healthcare Grp., LP,
616 F.3d 1249, 1254–55 (Fed.
Cir. 2010) (determining that “spring means” is a separate
element from “hinged arm” because neither element can
function as the other); Gaus v. Conair Corp.,
363 F.3d 1284,
1288 (Fed. Cir. 2004) (“Nothing in the descriptions of those
two components suggests that their structures or functions
overlap. To the contrary, the specification plainly describes
the two components as separate.”). We further conclude
that all the limitations were mapped, and the Board’s de-
termination does not violate the all-limitations rule.
And while the Board’s wording may have been impre-
cise, “we do not require perfect explanations.” In re Nuva-
sive, Inc.,
842 F.3d 1376, 1382 (Fed. Cir. 2016); see also
Bennett Regul. Guards, Inc. v. Atlanta Gas Light Co., 825
F. App’x 773, 780–82 (Fed. Cir. 2020). We may affirm the
Board’s findings “if we may reasonably discern that it fol-
lowed a proper path, even if that path is less than perfectly
clear.” In re Nuvasive, 842 F.3d at 1382. Here, the Board
“adopt[ed] the Examiner’s findings and conclusions,” J.A.
3, to properly map each limitation of the claimed invention
to Shaw and Herckner. Accordingly, we affirm the Board’s
determination of obviousness.
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IN RE: MILLER 11
B. The Administrative Record
Next, Ms. Miller asserts that the “PTO failed to make
a record explaining why new evidence and arguments were
insufficient to overcome a non-final obviousness rejection.”
Appellant’s Br. 16. The Examiner must articulate ade-
quate support for its rejection. In re Alton,
76 F.3d 1168,
1175 (Fed. Cir. 1996). Ms. Miller contends that, here, the
Board likewise failed to address the new evidence. Appel-
lant’s Br. 17–18. After the Examiner first rejected claims
1 and 24–26 for obviousness, Ms. Miller submitted new ev-
idence in the form of a photograph, dictionary definitions,
and patents. Appellant’s Br. 18. The Board maintained
the finding of obviousness on the grounds of the original
disclosure. J.A. 2–5. Accordingly, Ms. Miller argues that
the Board’s decision lacked a full and reasoned explanation
of its decision and fails the Alton standard. Appellant’s Br.
19. We disagree.
While the Board’s explanation may have been concise,
it was sufficient to reject Ms. Miller’s new evidence—evi-
dence that was clearly irrelevant to the basis of the Board’s
obviousness rejection. The Board is held to the same stand-
ard as district courts to provide opinions containing “suffi-
cient findings and reasoning to permit meaningful
appellate scrutiny.” Gechter v. Davidson,
116 F.3d 1454,
1458 (Fed. Cir. 1997). But even a short explanation may
constitute a sufficient administrative record when the evi-
dence is clearly unpersuasive. See, e.g., Paice, 881 F.3d at
905 (determining that the Board’s obviousness analysis
was sufficient when it was “commensurate” with the pa-
tentee’s arguments and “flow[ed] directly from its rejec-
tion” of those arguments); Hyatt v. Dudas,
492 F.3d 1365,
1370 (Fed. Cir. 2007) (determining that the Examiner pro-
vided sufficient reasons in rejecting claims for lack of a
written description because “[w]hen no such description
can be found in the specification, the only thing the PTO
can reasonably be expected to do is to point out its nonex-
istence” (citing In re Alton,
76 F.3d at 1175)); In re Morant,
Case: 21-1599 Document: 26 Page: 12 Filed: 02/28/2022
12 IN RE: MILLER
26 F. App’x 929, 935 (Fed. Cir. 2001) (determining that the
Board’s “somewhat terse” discussion sufficiently consid-
ered and rejected the evidence when it “found the [evi-
dence] unpersuasive because [it] failed to discuss either the
language of the pending claims or the specific references
over which the claims were rejected”).
In its decision here, the Board reasons through its re-
jection of Ms. Miller’s arguments regarding “emergency
water store,” including the new evidence. J.A. 3–4. The
photographic, dictionary, and patent evidence submitted
by Ms. Miller all purport to demonstrate the difference be-
tween emergency water store and food stuffs. J.A. 508–85;
Appellant’s Br. 18. But that argument was not a basis for
the Board’s obviousness rejection. As the Board explained,
the Examiner cited Shaw’s “internal storage area”—not
Shaw’s “food stuff, picnic supplies and ice”—for teaching
the claimed emergency water store. J.A. 3. Accordingly, it
is irrelevant whether Ms. Miller’s new evidence demon-
strates any gaps between the claimed “emergency water
store” and various food stuffs and picnic supplies. Unlike
in Alton, where the Board failed to address new evidence
which “contained statements of fact directly addressing”
the grounds of the rejection and the Examiner “provided
only conclusory statements,” In re Alton,
76 F.3d at 1175–
76, the Board here accounted for Ms. Miller’s new evidence
and provided sufficient explanation for its decision.
Moreover, the Board incorporated by reference the Ex-
aminer’s factual findings, which further elucidate its rea-
soning behind the rejection. Agencies may adopt and
incorporate findings by a factfinding body. In re Cree, Inc.,
818 F.3d 694, 698 n.2 (Fed. Cir. 2016). Likewise, the Board
may adopt the findings of the Examiner. See, e.g., In re
Brana,
51 F.3d 1560, 1564 n.13 (Fed. Cir. 1995) (“The
Board’s decision did not expressly make any independent
factual determinations or legal conclusions. Rather, the
Board stated that it ‘agree[d] with the examiner’s well rea-
soned, well stated and fully supported by citation of
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IN RE: MILLER 13
relevant precedent position in every particular, and any
further comment which we might add would be redundant.’
Therefore, reference in this opinion to Board findings are
actually arguments made by the examiner which have been
expressly adopted by the Board.”) (internal citations omit-
ted).
Here, the Board expressly adopted the Examiner’s
findings and conclusions consistent with its analysis, in-
cluding the Examiner’s explanation rejecting Ms. Miller’s
challenge to Shaw’s containers housing food stuffs and pic-
nic supplies. J.A. 2–3. The Examiner’s Answer explains:
In response to Appellant’s arguments against
the references individually, one cannot show
nonobviousness by attacking references individ-
ually where the rejections are based on combi-
nations of references. See In re Keller,
642 F.2d
413,
208 USPQ 871 (C.C.P.A. 1981); In re Merck
& Co.,
800 F.2d 1091,
231 USPQ 375 (Fed. Cir.
1986). Therefore, the individual attack on the
“containers” of Shaw which houses “food stuff”
as well as picnic supplies (which inherently may
include beverages) and ice to show nonobvious
that it isn’t water that’s being housed (although
the examiner is of the opinion that food stuff
may include water and picnic supplies may in-
clude water and ice is frozen water) along with
the attack on Herckner for not using the word
“emergency” or “water store” in its teaching of
the reusable container is without merit as the
rejection is based on a combination of refer-
ences.
...
In response to Appellant’s argument that the
examiner did not address the evidence that was
presented in response to the non-final action,
i.e., a photograph, dictionary of terms and U.S.
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14 IN RE: MILLER
Patent No.[] 4,458,864, the examiner main-
tained the position that so far as defined by the
original disclosure of claimed invention, the
prior art addressed the limitations and ren-
dered the invention obvious in light thereof.
The use of evidence and definitions not part of
the original disclosure cannot be subsequently
interpreted or relied upon to further define the
claimed invention.
J.A. 765–66 (cleaned up). Together, the Board’s explana-
tion and its adoption of the Examiner’s findings produce a
sufficient administrative record rejecting Ms. Miller’s new
evidence.
III. CONCLUSION
For the reasons discussed above, the Board did not err
in finding claim 1 of the ’874 Patent Application obvious
over the combination of Shaw and Herckner, and the Board
provided a sufficient administrative record to reject the
new evidence that Ms. Miller presented. We have consid-
ered Ms. Miller’s other arguments and find them unpersua-
sive. Because Ms. Miller does not make any separate
substantive arguments as to dependent claims 24–26 on
appeal, we likewise affirm the Board’s determination of ob-
viousness as to these claims. Accordingly, we affirm the
decision of the Board.
AFFIRMED
COSTS
No costs.
