NOTE: This disposition is nonprecedential. 

United States Court of Appeals 

for the Federal Circuit ______________________ 

IN RE: ASSET GUARD PRODUCTS, INC.,

Appellant

______________________ 

2021-1902

______________________ 

Appeal from the United States Patent and Trademark 

Office, Patent Trial and Appeal Board in No. 90/014,303.

______________________ 

Decided: April 13, 2022

______________________ 

KYRIE CAMERON, Patterson & Sheridan LLP, Houston, 

TX, argued for appellant Asset Guard Products, Inc. Also 

represented by BARDEN TODD PATTERSON. 

 MAI-TRANG DUC DANG, Office of the Solicitor, United 

States Patent and Trademark Office, Alexandria, VA, argued for appellee Andrew Hirshfeld. Also represented by 

KAKOLI CAPRIHAN, THOMAS W. KRAUSE, AMY J. NELSON,

FARHEENA YASMEEN RASHEED. 

 ______________________ 

Before MOORE, Chief Judge, TARANTO and HUGHES,

Circuit Judges.

TARANTO, Circuit Judge. 

Case: 21-1902 Document: 40 Page: 1 Filed: 04/13/2022
2 IN RE: ASSET GUARD PRODUCTS, INC. 

The Patent and Trademark Office (PTO) instituted an 

ex parte reexamination of U.S. Patent No. 9,410,302, which 

is owned by Asset Guard Products, Inc. The PTO’s examiner rejected claims 1–27 for obviousness, and the PTO’s 

Patent Trial and Appeal Board affirmed the rejection. Ex 

Parte Asset Guard Prods. Inc., No. 2020-006249, 2020 WL 

6375849, at *9 (P.T.A.B. Oct. 27, 2020) (Board Decision). 

Asset Guard appeals. We affirm several of the Board’s 

findings, but because we conclude that, as to one claim element, the Board erred in finding a teaching in the reliedon prior art, we vacate the Board’s decision and remand for 

further proceedings. 

I 

The ’302 patent describes a tank base that provides 

load-bearing support for “any type of storage, tank, or vessel.” ’302 patent, col. 1, lines 17–22. The tank base includes at least two pieces, each made of a substrate such as 

expanded polystyrene coated with an elastomer such as 

polyurea for protection and strength. Id., col. 2, lines 40–

45, lines 55–60. The pieces are positioned adjacent to each 

other to form the base, with at least one seam between the 

substrates to allow moisture to pass through and seep 

down and away from the bottom of the tank. Id., col. 5, line 

39, through col. 6, line 4. That passage of moisture prevents the accumulation of standing water (from spillage or 

rainwater) that could corrode the tank. Id., col. 2, lines 60–

63; id., col. 5, line 65, through col. 6, line 1. The specification discusses the use of such a tank base for above-ground 

storage tanks (ASTs) that are used to store water separated from oil and gas extracted from an underground well. 

Id., col. 1, lines 24–34. 

The patent has three independent claims. Independent claim 1 is representative:

1. A tank base sized to provide a load-bearing support for an above-ground storage tank and configured to allow moisture to pass, the above-ground 

Case: 21-1902 Document: 40 Page: 2 Filed: 04/13/2022
IN RE: ASSET GUARD PRODUCTS, INC. 3

storage tank having a bottom and defining an outer 

circumference, the tank base comprising:

a first encapsulated substrate, comprising:

a first part having a first thickness 

sized to provide the load-bearing 

support for the above-ground storage tank; and

a first elastomer encapsulating the 

first part;

wherein the first encapsulated substrate comprises a first planar portion;

a second encapsulated substrate positioned 

adjacent to the first encapsulated substrate, the second encapsulated substrate 

comprising:

a second part having a second 

thickness sized to provide the loadbearing support for the aboveground storage tank; and

a second elastomer encapsulating 

the second part;

wherein the second encapsulated 

substrate comprises a second planar portion; and

wherein the first and second planar 

portions are coplanar and perpendicular to each of the respective 

first and second thicknesses of the 

first and second parts; and

a first seam formed between the first and 

second encapsulated substrates to allow for 

moisture to pass between the first and 

Case: 21-1902 Document: 40 Page: 3 Filed: 04/13/2022
4 IN RE: ASSET GUARD PRODUCTS, INC. 

second encapsulated substrates so that 

moisture is allowed to seep away from the 

bottom of the tank, via the first seam, when 

the tank base provides the load-bearing 

support for the above-ground storage tank.

Id., col. 6, lines 35–65. 

In May 2019, Sentinel Manufacturing filed a request 

for an ex parte reexamination of claims 1–3, 5, 7–8, 10–17, 

19, 21, 23–25, and 27 of the ’302 patent under 35 U.S.C. 

§§ 302–307. The PTO initiated an ex parte reexamination 

of claims 1–27. The examiner issued a non-final office action rejecting claims 1–3, 5–17, and 19–27 as unpatentable 

for obviousness over Noble (U.S. Patent No. 6,327,722) and 

Heinz (U.S. Patent No. 7,114,210), claims 1–3, 5–7, 10, 12–

17, 19–20, and 24 as unpatentable for obviousness over Noble and Flam (U.S. Patent No. 6,418,861), and claims 4 and 

18 as unpatentable for obviousness over a combination of 

Noble, Simonson (U.S. Patent No. 6,877,189), and either 

Heinz or Flam.

Noble discloses a support pad for a spa, the pad including at least two planar pieces of rigid plastic foam, such as

polystyrene foam. Noble, col. 2, lines 7–11, col. 4, lines 56–

60. The foam sections may be treated with a barrier coating to “insure against the influx of moisture from the 

ground,” as the buildup of moisture may cause mold and 

odors in the tank. Id., col. 4, line 61, through col. 5, line 3. 

The sections are held together during installation with 

duct tape or a strip of fabric or plastic. Id., col 4, lines 38–

48. Heinz and Flam disclose a car ramp and a shipping 

pallet, respectively, each composed of a polystyrene foam

core encapsulated in polyurea. Heinz, col. 1, lines 52–61; 

Flam, col. 1, lines 58–65. The examiner determined that it 

would have been obvious to modify the plastic foam core 

support pad of Noble by encapsulating the plastic foam

(such as polystyrene foam) in polyurea, as suggested by either Heinz or Flam. The examiner also determined, in 

Case: 21-1902 Document: 40 Page: 4 Filed: 04/13/2022
IN RE: ASSET GUARD PRODUCTS, INC. 5

relevant part, that Noble’s construction “forms a seam . . . 

between the sections . . . that would allow moisture to seep 

away.” J.A. 439.

Asset Guard, in its response, argued that the cited references are not analogous art because they are from different technical fields from that of the ’302 patent. J.A. 474–

75, 482–83. It also argued that Noble does not disclose the 

claimed seam to allow moisture to pass between the substrates, stressing that the tape or fabric that holds the sections together would impede the movement of moisture

between them. J.A. 478–80. The examiner issued a final 

office action rejecting claims 1–27. The examiner explained that Noble is analogous art because it is in the 

same field of endeavor as the ’302 patent (i.e., providing a 

support pad for a tank), J.A. 502, and that Heinz and Flam

are analogous art because they are reasonably pertinent to 

the problem faced by the inventors of the ’302 patent (i.e., 

creating a lightweight but strong material for load-bearing 

support), J.A. 502, 505. The examiner restated the position

that Noble’s construction forms a seam between the sections, J.A. 494, and also explained that, although Noble 

teaches a tape or fabric to hold the sections together, “the 

broad teachings of [Noble] do not preclude the seams from 

allowing moisture to pass between sections,” J.A. 503, 506. 

Following Asset Guard’s response and request for reconsideration, the examiner issued an advisory action in December 2019 maintaining the rejection. 

Asset Guard appealed to the Patent Trial and Appeal 

Board. The Board affirmed the examiner’s rejection of 

claims 1–27. Board Decision, 2020 WL 6375849, at *9. The 

Board held that Noble is analogous art on two independent 

grounds: first, because it is in the same field of endeavor as 

the ’302 patent, as both inventions are support structures 

for tanks designed to hold large volumes of water; second,

because Noble is reasonably pertinent to the particular 

problem with which the inventors of the ’302 patent were 

concerned—creating a convenient and portable tank base. 

Case: 21-1902 Document: 40 Page: 5 Filed: 04/13/2022
6 IN RE: ASSET GUARD PRODUCTS, INC. 

Id. at *5. The Board also agreed with the examiner that 

“the broad teachings of Noble would allow for seams formed 

between encapsulated sections of the pad to allow moisture 

to pass,” as Noble “does not require the tape to be present 

after the spa is installed.” Id. at *7. After unsuccessfully 

seeking reconsideration, Asset Guard timely appealed. 

II

Obviousness is a question of law, and we review the 

Board’s conclusion de novo and underlying factual determinations for substantial-evidence support. PersonalWeb 

Techs., LLC v. Apple, Inc., 917 F.3d 1376, 1381 (Fed. Cir. 

2019). Whether a reference is analogous art is an issue of 

fact. Donner Tech., LLC v. Pro Stage Gear, LLC, 979 F.3d 

1353, 1359 (Fed. Cir. 2020). What a reference teaches, and 

whether a relevant artisan would have been motivated to 

modify the teachings of a reference, are also questions of 

fact. WBIP, LLC v. Kohler Co., 829 F.3d 1317, 1327 (Fed. 

Cir. 2016); Winner Int’l Royalty Corp. v. Wang, 202 F.3d 

1340, 1349 (Fed. Cir. 2000) (citation omitted).

A 

A reference is analogous art if (a) it “is from the same 

field of endeavor, regardless of the problem addressed,” or 

(b) it “is reasonably pertinent to the particular problem 

with which the inventor is involved” even though it “is not 

within the field of the inventor’s endeavor.” Donner Tech.,

979 F.3d at 1359 (citing In re Bigio, 381 F.3d 1320, 1325 

(Fed. Cir. 2004)). The Board determined that Noble is both 

from the same field of endeavor as the ’302 patent and reasonably pertinent to the particular problems with which 

the inventors of the ’302 patent were concerned. We focus 

on the former determination, which is a sufficient basis to 

affirm the Board’s decision that the references are analogous art.

The PTO is “to determine the appropriate field of endeavor by reference to explanations of the invention’s 

Case: 21-1902 Document: 40 Page: 6 Filed: 04/13/2022
IN RE: ASSET GUARD PRODUCTS, INC. 7

subject matter in the patent application, including the embodiments, function, and structure of the claimed invention.” Bigio, 381 F.3d at 1325. The explanations of the 

invention’s subject matter in the ’302 patent support the 

Board’s finding that Noble and the ’302 patent are in the 

same field of endeavor. As the Board noted, the inventors 

of the ’302 patent explained in the background of the invention that the tank base may be used to provide loadbearing support and protect against spills and leaks associated with “any type of storage, tank, or vessel.” Board 

Decision, 2020 WL 6375849, at *5 (citing ’302 patent, col. 

1, lines 19–22). The patent also explains that the tank base 

“is applicable to any number of secondary containment systems and vessel storage areas.” Id., col. 3, lines 53–59. Finally, it explains that “one skilled in the art, armed with 

this disclosure, will recognize that the claimed invention 

works equally well within secondary containment systems 

of varying orientation, shape and positions” and that the 

tank base “can be modified or custom built to accommodate 

any size and shape desired.” Id., col. 3, lines 59–67. The 

specification thus indicates that the field of endeavor of the 

’302 patent includes support structures for storage systems 

of various shapes and sizes, such as Noble’s tank base supporting a water-filled spa. Based on these disclosures, the 

Board correctly rejected Asset Guard’s argument that the 

field of endeavor of the ’302 patent is limited to structural 

supports for a specific type of large-volume tank (i.e., an 

AST). See In re Mettke, 570 F.3d 1356, 1359 (Fed. Cir. 

2009) (rejecting patent owner’s argument that the Board 

defined the field of endeavor too broadly in light of the specification’s broad disclosures of related technology).

The structural similarities between Noble and the ’302 

patent also support the Board’s finding that the references 

are in the same field of endeavor. Bigio, 381 F.3d at 1325. 

Each reference discloses planar structures composed of at 

least two sections of rigid plastic, which sit below a storage 

vessel and provide load-bearing support for that vessel. 

Case: 21-1902 Document: 40 Page: 7 Filed: 04/13/2022
8 IN RE: ASSET GUARD PRODUCTS, INC. 

See ’302 patent, col. 2, lines 40–60; Noble, col. 2, lines 7–11, 

22–30. We conclude that the Board had substantial evidence to support its finding that Noble and the ’302 patent

are in the same field of endeavor and thus are analogous 

art. We affirm that finding.

Because we determine that Noble and the ’302 patent 

are in the same field of endeavor, we need not decide

whether Noble is “reasonably pertinent to the particular 

problem with which the inventor is involved.” Bigio, 381 

F.3d at 1325. We do, however, note that Asset Guard has 

not supported its contention that, in order for a reference 

to be reasonably pertinent, the reference must be concerned with a problem that was of “central importance” to 

the inventors. Asset Guard cites only CyWee Group Ltd. v. 

Google LLC, where this court affirmed a factual determination by the Board that a problem addressed in a prior art 

reference was of “central importance” to the inventors, and 

therefore the reference “logically would have commended 

itself to the inventor’s attention.” 847 F. App’x 910, 914

(Fed. Cir. 2021) (nonprecedential) (citation omitted). CyWee held only that, if a problem addressed in a reference is 

of “central importance” to the inventors, that fact is sufficient for the reference to pass the “reasonably pertinent” 

test, not that it is necessary. In fact, CyWee explained that

a reference must be reasonably pertinent only to “one or 

more of the particular problems to which the claimed inventions relate.” Id. at 913 (emphasis added) (citation 

omitted). And that formulation accurately states our law. 

See Donner Tech., 979 F.3d at 1359 (“[I]f the two references 

have ‘pertinent similarities’ such that [the prior art reference] is reasonably pertinent to one or more of the problems 

to which the . . . patent pertains, then [the prior art reference] is analogous art.”). Here, as noted, we need not decide whether the Board’s finding that Noble is reasonably 

pertinent to one or more of the particular problems to 

which the ’302 patent relates is supported by substantial 

evidence. 

Case: 21-1902 Document: 40 Page: 8 Filed: 04/13/2022
IN RE: ASSET GUARD PRODUCTS, INC. 9

B 

We also affirm the Board’s determination that Heinz 

and Flam are analogous art. The Board had substantial 

evidence to support its finding that both references are reasonably pertinent to one or more of the particular problems 

with which the inventors of the ’302 patent were concerned—indeed, centrally concerned: “strengthening a core 

foam material by encapsulating it with an elastomer.” 

Board Decision, 2020 WL 6375849, at *5–6. The ’302 patent explains that the improved tank base pieces include a 

polystyrene foam core encapsulated with an elastomer 

such as polyurea, “which helps encapsulate the polystyrene 

and keeps it from flaking off and failing under the weight 

of . . . the tank,” ’302 patent, col. 4, lines 43–49, and which 

adds “protection and strength,” id., col. 2, lines 42–45. And, 

as the Board explained, both Heinz and Flam disclose coating a polystyrene foam core material with polyurea to 

strengthen the core material. See Board Decision, 2020 

WL 6375849, at *5–6 (citing Heinz, col. 1, lines 57–61; 

Flam, col. 1, lines 58–65). 

Asset Guard invokes In re Oetiker, which explains that 

it is necessary to consider “the reality of the circumstances—in other words, common sense” when deciding the 

fields in which a relevant artisan “would reasonably be expected to look for a solution to the problem facing the inventor.” 977 F.2d 1443, 1447 (Fed. Cir. 1992) (citation 

omitted). Oetiker does not undermine the Board’s decision 

here. Because the references at issue are directed to the 

(central) ’302 patent problem of encapsulating a plastic 

foam material for strength, and indeed use the same materials as the ’302 patent (a polystyrene foam encapsulated 

in polyurea), the references “logically would have commended [themselves] to [the] inventor’s attention,” Airbus 

S.A.S. v. Firepass Corp., 941 F.3d 1374, 1382 (Fed. Cir. 

2019) (quoting In re Clay, 966 F.2d 656, 659 (Fed. Cir. 

1992)), and common sense dictates that they are analogous 

art. We conclude that the Board’s analogous-art 

Case: 21-1902 Document: 40 Page: 9 Filed: 04/13/2022
10 IN RE: ASSET GUARD PRODUCTS, INC. 

determination as to Heinz and Flam is supported by substantial evidence. 

C 

We next address the merits of the Board’s obviousness 

determination. Asset Guard argues that there is no disclosure, in any of the references, of a seam formed between 

substrates “to allow for moisture to pass between the first 

and second encapsulated substrates so that moisture is allowed to seep away from the bottom of the tank” through 

the seam, a limitation required by representative independent claim 1.1 The Board rested its obviousness conclusion on its determination that “the broad teachings of 

Noble would allow for seams formed between encapsulated 

sections of the pad to allow moisture to pass,” as Noble 

“does not require the tape to be present after the spa is installed,” Board Decision, 2020 WL 6375849, at *7 (emphasis added). That reasoning, we conclude, is insufficient 

under the law of obviousness. 

To reach an obviousness conclusion, the Board had to 

find a reason a relevant artisan would have arrived at the 

claimed invention, with this particular claimed property. 

1 The limitation that “moisture is allowed to seep 

away from the bottom of the tank” is present only in challenged independent claims 1 and 15. Challenged independent claim 24 relevantly discusses only a seam “to allow for 

moisture to pass between the first and second encapsulated 

substrates,” with no directional element. ’302 patent, col. 

8, line 45, through col. 9, line 23. Neither party has made

a separate argument as to claim 24 before us. We presume 

that it is properly interpreted to have the directional meaning of claims 1 and 15, given that the specification refers

only to moisture passing downward, to get it away from the 

tank bottom, rather than moisture passing upward so that 

it reaches the tank bottom. 

Case: 21-1902 Document: 40 Page: 10 Filed: 04/13/2022
IN RE: ASSET GUARD PRODUCTS, INC. 11

The Board relied entirely on Noble, not the other prior art 

at issue, to supply that reason. But the Board did not suggest, and could not have suggested, that Noble expressly 

teaches a seam to allow moisture to pass down and away 

from the tank. Defending the Board in this court, the Director cites to nothing in Noble that expressly so teaches. 

Indeed, Noble’s concern with moisture is a concern with 

“the influx of moisture from the ground,” Noble, col. 4, line 

62 (emphasis added), moving up to cause odorous growths 

in (or otherwise damage) the foam base—a concern that 

does not involve the seam and that is addressed by a coating. Noble, col. 4, line 61, to col. 5, line 13.

Nor did the Board find that the seam taught in Noble 

inherently had the property of allowing moisture to pass 

down through the seam to seep away from the tank. An 

obviousness determination can rest on finding a claimed 

property to be inherent in prior art. See PAR Pharm., Inc. 

v. TWI Pharm., Inc., 773 F.3d 1186, 1194–95 (Fed. Cir. 

2014). But “[t]he mere fact that a certain thing may result 

from a given set of circumstances is not sufficient” to show 

inherency. Id. at 1195 (emphasis added). Rather, the limitation “necessarily must be present, or the natural result 

of the combination of elements explicitly disclosed by the 

prior art.” Id. at 1196. The Board, in saying that “the 

broad teachings of Noble would allow for seams formed between encapsulated sections of the pad to allow moisture 

to pass,” did not make such a finding. Board Decision, 2020 

WL 6375849, at *7 (emphasis added).

In choosing those words, the Board did not adopt the 

examiner’s differently worded statement that Noble’s construction “forms a seam . . . between sections . . . that would 

allow moisture to seep away.” J.A. 439. The Board carefully said only that Noble “would allow” a seam with the 

property of allowing downward seepage, not, as the examiner said, that Noble teaches a construction that actually 

“forms a seam” that would allow for the downward seepage. 

Case: 21-1902 Document: 40 Page: 11 Filed: 04/13/2022
12 IN RE: ASSET GUARD PRODUCTS, INC. 

The Board had good reason for not adopting the examiner’s 

statement.

As noted, nothing in Noble says this about its seam. 

Moreover, when Noble’s sections are placed adjacently, neither the examiner nor the Board pointed to evidence (in 

Noble or otherwise) showing that the seam would necessarily allow for moisture to pass through and seep away 

from the bottom of the tank. A tight enough fit of the pieces 

might well prevent such seepage even without tape or fabric holding the pieces together. But Noble in fact teaches

the use of tape or fabric placed on top of the pieces to hold 

the construction together—“to allow [the sections] to be 

held together during installation,” Noble, col. 4, lines 29–

31, “while [the] spa [] is lowered in place,” id., col 4, lines 

46–47—and Noble never directs removal of the tape or fabric once the spa is lowered in place (which would present a 

challenge) or even once under-base utility lines are connected, see id., col. 4, lines 47–54. 

One passage in Noble refers to “temporarily adhering 

[the sections] together along their contiguous top surfaces, 

tilting one of the sections upward [for electric and water 

line installation] . . . and then returning the tilted section 

to planar assembly.” Id., col. 2, lines 22–30. The word 

“temporarily” may suggest removal, but the Board did not 

address that passage, let alone draw out of the word “temporarily” an implication of necessary removal. And in any 

event, the Board did not make a finding of necessary possession of the claimed downward-drainage property if the 

tape or fabric is removed.

The Board also made no finding that a relevant artisan 

would have been motivated to make a choice, within the 

range of seams permitted by Noble, to use sufficient spacing within the seam to meet the claim requirement regarding downward drainage. “A claimed invention may be 

obvious even when the prior art does not teach each claim 

limitation, so long as the record contains some reason why 

Case: 21-1902 Document: 40 Page: 12 Filed: 04/13/2022
IN RE: ASSET GUARD PRODUCTS, INC. 13

one of skill in the art would modify the prior art to obtain 

the claimed invention.” Nike, Inc. v. Adidas AG, 812 F.3d 

1326, 1334 (Fed. Cir. 2016), overruled on other grounds by

Aqua Prods., Inc. v. Matal, 872 F.3d 1290 (Fed. Cir. 2017) 

(en banc); see also Dow Jones & Co., Inc. v. Ablaise Ltd., 

606 F.3d 1338, 1350–51 (Fed. Cir. 2010) (holding claims invalid as obvious where a relevant artisan would have been 

motivated to add a “well known” feature to a prior art reference to meet the limitations). But here, there was no discussion by the Board, supported by a disclosure in the ’302 

patent or Noble, or by any other evidence, that a relevant 

artisan would have 1) recognized that standing water in 

secondary containment systems was a problem, or 2) been 

motivated to do something not required by Noble (e.g., separating the sections) to solve such a problem.

For those reasons, the Board’s finding about the downward-drainage claim limitation cannot stand. We vacate 

the Board’s obviousness determination and remand to the 

Board for such further proceedings as are appropriate.

D 

Asset Guard finally challenges the Board’s finding of a 

motivation to combine Noble with Heinz or Flam. We determine that the Board had substantial evidence to support 

its determination that a relevant artisan would have combined the spa support of Noble with the coating disclosed 

in Heinz or Flam. Here, Noble itself provides a motivation 

to combine when it discloses that “[i]t is preferred that [the] 

rigid foam sections . . . be treated to insure against the influx of moisture from the ground” in order to prevent mold 

and odors, Noble, col. 4, lines 61–67, and specifically suggests the application of a barrier coat to the foam surface, 

id., col. 4, line 67, through col. 5, line 13. The Board had 

substantial evidence that a relevant artisan would have 

treated the plastic foam (e.g., polystyrene foam) sections in 

Noble with the polyurea coating of Heinz and Flam (disclosed as encapsulating a polystyrene material to add 

Case: 21-1902 Document: 40 Page: 13 Filed: 04/13/2022
14 IN RE: ASSET GUARD PRODUCTS, INC. 

protection) in order to achieve Noble’s objective of preventing an influx of moisture. We agree with the Board that 

Asset Guard’s argument that encapsulating Noble’s sections in polyurea would prevent piercing of the sections

necessary to install the spa’s utility lines is unsupported, 

as Asset Guard presented no evidence that the use of such 

a coating would prevent piercing. Board Decision, 2020 

WL 6375849, at *8.

III

For the foregoing reasons, we affirm several of the 

Board’s determinations but vacate the Board’s determination of obviousness and remand for further proceedings 

consistent with this opinion.

The parties shall bear their own costs.

AFFIRMED IN PART, VACATED, AND REMANDED

Case: 21-1902 Document: 40 Page: 14 Filed: 04/13/2022