Ex Parte Ahlfeld et al

Patent Trials and Appeals Board

Mar 21, 2016

12386524 - (D) (P.T.A.B. Mar. 21, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/386,524 04/16/2009
123334 7590 03/23/2016
TerraPower, LLC
330 120th Ave. NE, Suite 100
Bellevue, WA 98005
FIRST NAMED INVENTOR
Charles E. Ahlfeld
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0707-032-004-000000 4535
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
03/23/2016 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):
docketing@terrapower.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES E. AHLFELD, JOHN ROGERS GILLELAND,
RODERICK A. HYDE, MURIEL Y. ISHIKAWA, DAVID G. MCALEES,
NATHAN P. MYHRVOLD, CLARENCE T. TEGREENE, THOMAS
ALLAN WEA VER, CHARLES WHITMER, VICTORIA Y.H. WOOD,
LOWELL L. WOOD JR, and GEORGE B. ZIMMERMAN
Appeal2013-009003
Application 12/386,5241
Technology Center 3600
Before LINDA E. HORNER, THOMAS F. SMEGAL, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Charles E. Ahlfeld et al. ("Appellants") seek our review under 35
U.S.C. § 134(a) of the final rejection of claims 1, 5, 10-12, 15-38, 40, 41,
44--46, 50, 53-73, 75, 76, 78-89, and 91. Appeal Br. 40. We have
jurisdiction under 35 U.S.C. § 6(b ).
We REVERSE.
1 According to Appellants, the real party in interest is Searete LLC. Appeal
Br. 5.
Appeal2013-009003
Application 12/386,524
CLAIMED SUBJECT MATTER
Appellants' invention relates to the removal of volatile fission
products from a nuclear reactor. Spec. 1. Claims 1 and 41 are independent
and claim 1 is reproduced below, with emphasis on a certain claim limitation
at issue in this appeal.
1. A nuclear fission reactor fuel assembly configured for
controlled removal of a volatile fission product released by a
bum wave in a traveling wave nuclear fission reactor,
compnsmg:
a porous nuclear fuel body having a volatile fission
product therein;
an enclosure enclosing the porous nuclear fuel body
therein;
a fluid control subassembly coupled to the enclosure to
control removal of at least a portion of the volatile fission product
from the porous nuclear fuel body; and
a control unit coupled to the fluid control subassembly to
control operation of the fluid control subassembly to
controllably release the volatile fission product in response to a
selected parameter in the traveling t'vave nuclear fission reactor.
Appeal Br. 41 (Claims App.) (emphasis added).
THE REJECTIONS
I. Claims 1, 5, 10-12, 15-36, 41, 44--46, 50, 53-73, 75, 76, and
78-87 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Benson
(US 3,322,644, issued May 30, 1967) and Lofredo (US 4,012,490, issued
Mar. 15, 1977).2 Final Act. 4, 8.
2 Although the rejection includes claim 43 in its initial listing, this claim is
not pending in the application. Compare Final Act. 4, with id. at 1; see also
Appeal Br. 40, 44 (Claims App.).
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Appeal2013-009003
Application 12/386,524
IL Claims 37, 38, 40, 88, 89, and 91 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Benson, Lofredo, and Krucoff (US
3,039,948, issued June 19, 1962). Final Act. 9.
ANALYSIS
Rejection I: Claims 1, 5, 10--12, 15-36, 41, 44-46, 50, 53-73, 75, 76, and
78--87 as Unpatentable over Benson and Lofredo
In rejecting independent claims 1 and 41, and their respective
dependent claims 5, 10-12, 15-36, 44--46, 50, 53-73, 75, 76, and 78-87, the
Examiner finds that Benson discloses the claimed reactor fuel assembly
having enclosure 42 enclosing reactor fuel body 10, and fluid control
subassembly 41, 43 "capable of controlling removal of at least a portion of .
. . the volatile fission product from" nuclear fuel body 10. Id. at 4 (citing
Benson, Figs. 5, 6).
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Appeal2013-009003
Application 12/386,524
Figures 4---6 of Benson are reproduced below:
~ ·~~ ~ :t• ('.(,~, .... ~;;,. -~~ ~ ..
~.·~:.·:::::~."~:::·~.::;::.:·:.~~:~ ~ ~.·~;.-::~«~~;~~~ .. ~;~~~;-:.:..::::~-:.:::::;.~ , ' \"I."''"'';'"'"' "~iw~~--~"'"""'', , '
:1,";1.... 6 \ .. {~.(}(.,:-·;.. $.. N ~·
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Figure 5 depicts a breeder reactor with control rods 33 inserted in
holes 31, while Figure 4 further shows holder plates 3 0, 3 2 between which
core fuel elements 10 are placed. Benson; col. 2, 11. 14--18; col. 3, 1. 64--col.
4, 1. 3. Figure 6 is a cross-sectional view of the reactor shown in Figure 5,
and further shows fission product removal apparatus 43. Id. at col. 4, 11. 32-
52. In operation, apparatus 43 receives a purge gas-which originates from
source 41-that flows through the passageways between plates 30, 32 and
through the central holes in core elements 10, to "continuously and
promptly" remove fission products from the reactor. Id. at col. 4, 11. 41-52,
col. 5, 11. 35-37, and col. 1, 11. 34--37.
The Examiner also finds that Benson does not disclose the claimed
"control unit ... to controllably release the volatile fission product in
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Appeal2013-009003
Application 12/386,524
response to a selected parameter," and instead relies on Lofredo for teaching
control unit 14 coupled to a fluid control subassembly that is "capable of
permitting controlled release of the volatile fission product in response to
volatile fission product pressure in the reactor." Final Act. 7 (emphasis
added) (citing Lofredo, Abstract, Fig. 2).
Figure 2 of Lofredo is reproduced below:
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FIG·. 2 '!..,"'"""----"-""""""'--""""'·"'"""""""""'"""""z,""""-------------f0·;-fi?.::r-
Figure 2 depicts a recombiner for converting hydrogen and oxygen to
water. Lofredo, col. 3, 11. 44--47. Reactor off-gas, which includes
radioactive gases, enters line 10, is combined with hydrogen from line 12,
and fed through control valve 14 prior to entering compressor CP-10. Id. at
col. 3, 11. 47--66. In compressor CP-10, the mixture of reactor off-gas and
hydrogen is diluted with steam from line 11, for the purpose of reducing the
outlet mixture in line 16 to below an explosive limit. Id. at col. 3, 1. 67--col.
4, 1. 2. Steam in line 11 is automatically regulated by valve 13, which is
adjusted by automatic control unit 15. Id. at col. 4, 11. 2-5.
Based on these teachings, the Examiner concludes that it would have
been obvious
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Appeal2013-009003
Application 12/386,524
to modify [Benson] in view of [Lofredo] for the predictable result
of provid[ing] an improved and simplified system for efficiently
and safely receiving, separating, concentrating and storing
radioactive noble gases such as krypton and xenon that are
included in the off-gas from nuclear systems such as boiling
water nuclear reactors and processes involving the manufacture,
use, or reprocessing of nuclear fuel.
Final Act. 7.
In contesting the rejection, Appellants point out that Benson's fission
product removal apparatus 43 "continuously and promptly" removes fission
products from the core, and that Benson only teaches continuous,
uncontrolled fission product removal. Appeal Br. 27 (citing Benson, col. 4,
11. 41-52, and col. 5, 11. 35-37); see also id. at 24 (citing Benson, col. 5, 11.
35-37). Appellants further point out that Lofredo's valve 14, which the
Examiner finds satisfies the claimed "control unit," lacks any "control
signals or control inputs of any kind," and that a combination of Benson and
Lofredo fails to yield the claimed "control unit ... [for] controllably
releas[ing] the volatile fission product in response to a selected parameter,"
as recited in the claims. See id. at 28-29; see also id. at 24--26 (citations
omitted); see also Reply Br. 5. Appellants argue that because the cited art
does not teach or suggest the claimed "control unit," the Examiner did not
establish a prima facie case of unpatentability. Appeal Br. 29.
Appellants also argue that the "Examiner failed to clearly explain the
rejections relative to the cited Benson and Lofredo references" (Appeal Br.
29) and that the Appellants are "left to speculate as to the Examiner's
intentions" (id. at 31 ).
In response to Appellants' assertion that a combination of Benson and
Lofredo would yield an invention that "continuously removes fission
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Appeal2013-009003
Application 12/386,524
products from the core in an uncontrolled manner," the Examiner explains
that the proper test for obviousness is "what the combined teachings of the
references would have suggested to those of ordinary skill in the art." Ans.
4 (citing In re Keller, 642 F.2d 413 (CCPA 1981)). The Examiner also
explains that limitations from the Specification are not read into the claims
and that "the apparatus in the prior art is capable of performing" the claimed
functions. Id. at 4---6 (citing In re Van Geuns, 988 F.2d 1181 (Fed. Circ.
1993), MPEP §§ 2111-2115).
Upon reviewing the record, Appellants' arguments are persuasive.
In combining Benson with Lofredo, the Examiner proposes to
combine Benson's fission product removal apparatus 43 with Lofredo's
valve 14----which the Examiner finds satisfies the claimed "control unit"-
for the "predictable result of provid[ing] an improved and simplified system
for efficiently and safely receiving, separating, concentrating and storing
radioactive noble gases."3 Final Act. 7 (emphases added). The rejection
does not set forth a location where Lofredo' s valve 14 would be added to
Benson's apparatus 43, and we do not see how adding this valve either
3 In relying on Lofredo, the rejection appears to rely only on Lofredo's valve
14 for satisfying Benson's missing "control unit." See Final Act. 7; see Ans.
2---6. We do not understand the Examiner to have proposed to modify
Benson by adding the entirety of Lofredo' s recombiner, and not just valve
14. If this modification is what the Examiner intended, the rejection should
have explained as much. 37 C.F.R. § 1.104(c)(2) ("In rejecting claims for
want of novelty or for obviousness, ... [t]he pertinence of each reference, if
not apparent, must be clearly explained.") Otherwise, we agree with
Appellants that they are left to speculate as to the Examiner's intentions.
Appeal Br. 29, 31.
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Appeal2013-009003
Application 12/386,524
"improves," "simplifies," or renders the apparatus more "etlicient" or
"safe."
Accordingly, the Examiner's determination of obviousness is not
supported adequately by "some articulated reasoning with some rational
underpinning." See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (cited
with approval inKSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007)).
Further, the claims require that the "control unit ... control operation
of the fluid control subassembly to controllably release the volatile fission
product in response to a selected parameter." Appeal Br. 41, 44 (Claims
App.) (emphasis added). The Examiner finds that valve 14 "is capable of
permitting a controlled release of the volatile fission product in response to
volatile fission product pressure in the reactor." Final Act. 7 (emphases
added).
It is well established that claims directed to an apparatus must be
distinguished from the prior art in terms of structure rather than function. In
re Schreiber, 128 F.3d 1473, 1477-78 (Fed. Cir. 1997). In order to satisfy
the functional limitations in an apparatus claim, however, the prior art
apparatus must be capable of performing the claimed function. Id. at 1478.
In the present case, to be capable of performing the functional limitation of
controlling "operation of the fluid control subassembly to controllably
release the volatile fission product in response to a selected parameter," as
recited in independent claims 1 and 41, Lofredo' s valve 14 must possess the
necessary structure, such as an actuator that adjusts the valve's position "in
response to a selected parameter." We agree with Appellants that "no
control signals or control inputs of any kind are supplied to the actuator of
the valve 14." Appeal Br. 26. As explained supra, although valve 14 may
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Application 12/386,524
be opened and closed to adjust the flow of hydrogen and reactor-off gas to
compressor CP-10, and automatic control unit 15 automatically adjusts the
position of valve 13 to control steam flowing to compressor CP-10, we find
nothing in Lofredo to suggest that valve 14 is capable of being controlled in
response to "fission product pressure in the reactor," as set forth in the
rejection. Final Act. 7.
For the foregoing reasons, we do not sustain the rejection of
independent claims 1 and 41, and their respective dependent claims 5, IO-
12, 15-36, 44--46, 50, 53-73, 75, 76, and 78-87.
Rejection II: Claims 37, 38, 40, 88, 89, and 91 as Unpatentable over
Benson, Lofredo, and Krucoff
The rejection of claims 37, 38, 40, 88, 89, and 91 is based on the same
unsupportable finding and reasoning relied on and discussed supra with
respect to Rejection I. Final Act. 9. Therefore, for the same reasons, we do
not sustain the rejection of claims 37, 38, 40, 88, 89, and 91 as unpatentable
over Benson, Lofredo, and Krucoff.
SUMMARY
The Examiner's decision to reject claims 1, 5, 10-12, 15-36, 41, 44--
46, 50, 53-73, 75, 76, and 78-87 under 35 U.S.C. § 103(a) as unpatentable
over Benson and Lofredo is reversed.
The Examiner's decision to reject claims 37, 38, 40, 88, 89, and 91
under 35 U.S.C. § 103(a) as unpatentable over Benson, Lofredo, and
Krucoff is reversed.
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Application 12/386,524
REVERSED
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