Ex Parte Berger et al

Patent Trial and Appeal Board

Aug 28, 2017

13477244 (P.T.A.B. Aug. 28, 2017)

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.
13/477,244 05/22/2012 John F. Berger 5.0002.1 (24IG251788) 3285
15624
Ryan Alley IP
(GE Docket)
P.O. Box 87
7590 08/30/2017 EXAMINER
BURKE, SEAN P
Alexandria, VA 22313 ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/30/2017 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):
office @ alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOHN F. BERGER, EARL F. SAITO, YOGESHWAR DAYAL,
MARTIN W. BRITTINGHAM, and JEFFREY M. HARE
Appeal 2016-006219
Application 13/477,244
Technology Center 3600
Before ALLEN R. MacDONALD, CARL W. WHITEHEAD JR., and
BRADLEY W. BAUMEISTER, Administrative Patent Judges.
MacDONALD, Administrative Patent Judge.
DECISION ON APPEAL
Appeal 2016-006219
Application 13/477,244
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a rejection of claims
1—3, 5—12 and 21—28. Claims 4 and 13—20 have been cancelled. App. Br.
20-25. We have jurisdiction under 35 U.S.C. § 6(b).
Exemplary Claims
Exemplary claims 1, 27, and 28 under appeal read as follows
(emphasis and brackets added):
1. A system for delivering and retrieving irradiation targets through a
nuclear reactor, the system comprising:
[A.] a loading / offloading system including a first distinct path
and a second distinct path traversable by the irradiation targets,
wherein the loading / offloading system is outside of an access
barrier of the nuclear reactor;
[B.] a plurality of penetration pathways each connecting the
loading / offloading system to one of a plurality of instrumentation
tubes extending into the nuclear reactor inside the access barrier,
wherein the plurality of penetration pathways share a single
penetration through the access barrier, wherein each of the penetration
pathways is traversable by the irradiation targets to the
instrumentation tube, wherein,
[i.] the first distinct path connects an irradiation target
source to the penetration pathways,
[ii.] the second distinct path connects the penetration
pathways to an irradiation target harvesting point outside the
access barrier, and
[iii.] the loading / offloading system is configured to
provide one of the distinct paths based on a destination of the
irradiation targets; and
[C.] an indexer connected to the penetration pathways inside the
access barrier, wherein the indexer is configured to provide one of the
penetration pathways for the irradiation targets to move into / out of a
corresponding one of the instrumentation tubes.
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Application 13/477,244
27. The system of claim 1, further comprising:
a drive system including a cable-driven plunger shaped to pass
through the penetration pathways.
28. The system of claim 27, wherein the access barrier is a
containment building, wherein the drive system is positioned outside
the containment building, and wherein the cable-driven plunger is
configured to extend from the drive system completely through the
penetration pathways to the corresponding instrumentation tube, the
system further comprising:
a plurality of retainers each connected to one of the penetration
pathways at an opening of the corresponding instrumentation tube,
wherein each of the retainers applies a force to the irradiation targets
to prevent the irradiation targets from exiting the corresponding
instrumentation tube; and
a plurality of diverters each connected to one of the penetration
pathways below the retainer, wherein each of the diverters includes an
alternate pathway distinct from the one penetration pathway, and
wherein each of the diverters is configured to create only one of the
alternate pathway and the penetration pathway.
Rejections on Appeal
1. The Examiner rejected claim 8 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement.1
2. The Examiner rejected claim 8 under 35 U.S.C. § 112, second
paragraph, as being indefinite. Final Act. 5—6.
1 In the Final Action, the Examiner stated that claims 4, 8, 21, 22, and 28
“are rejected ... as failing to comply with the enablement requirement.”
Final Act. 4. Subsequently, claim 4 has been cancelled (App. Br. 20).
Thereafter, this rejection of claims 21, 22, and 28 has been withdrawn
(Ans. 2) and replaced by a § 112 rejection as failing to comply with the
written description requirement (Ans. 2—7 (discussing new matter)).
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Application 13/477,244
3. The Examiner rejected claims 21, 22, and 28 under 35 U.S.C.
§ 112, first paragraph, “for containing new matter” (Ans. 2), i.e., failing to
comply with the written description requirement.
4. The Examiner rejected claims 1—3, 5, 6, 8—12 and 21—282
under 35 U.S.C. § 103(a) as being unpatentable over the combination of
Russell, II et al. (US 2009/0213977 Al; iss. Aug. 27, 2009) and Cabell
(US 3,069,337; iss. Dec. 18, 1962) (Final Act. 6-15).3
5. The Examiner rejected claim 7 under 35 U.S.C. § 103(a) as
being unpatentable over the combination of Russell, Cabell, and Bloomquist
et al. (US 2011/0051875 Al; Mar. 3, 2011) (Final Act. 15).4
Appellants ’ Contentions
1. Appellants contend the Examiner erred in rejecting claim 8
under 35 U.S.C. § 112, first and second paragraphs, because:
[T]he entered October 4 amendment cancelled “that substantially
maintains its physical properties when exposed to radiation in an
operating nuclear reactor” from claim 8, which was the sole basis
identified by the Examiner for all § 112 rejections to that claim.
Reply Br. 2.
2 Although the initial statement of this rejection states claims 1—12 and 21—
26 are rejected (Final Act. 6), the body of the rejection covers claims 1—6, 8—
12, and 21—28 (Final Act. 6—15). Claim 7 is separately rejected (Final
Act. 15). As previously noted, claim 4 has been cancelled (App. Br. 20).
3 Separate patentability is argued for claims 1 and 28. Separate patentability
is not argued for claims 2, 3, 5, 6, 8—12 and 21—27. Except for our ultimate
decision, the Examiner’s 103(a) rejection of these claims is not discussed
further herein.
4 Separate patentability is not argued for claim 7. Thus, the rejection of this
claim turns on our decision as to claim 1. Except for our ultimate decision,
these claims are not discussed further herein.
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Application 13/477,244
2. Appellants contend the Examiner erred in rejecting claims 21,
22, and 28 under 35 U.S.C. § 112, first paragraph, because:
[T]he Examiner’s rationale underlying the written description
requirement - that retaining device and retention mechanism “are
not used interchangeably and have separate definitions” from
retainer - lacks a factual basis, and the written description
rejection cannot be affirmed.
Reply Br. 5 (emphasis added, original emphasis omitted).
3. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[Assertion of “rearrangement of parts” does not make out a
prima facie case of obviousness; rather, a motivation to combine
or modify the prior art must be explicitly reasoned under § 103.
In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006). In the context
of a rearrangement of parts, a specific motivation for such
rearrangement still must be provided to show obviousness.
App. Br. 12 (emphasis added).
4. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[Mjoving the loading/offloading system, distinct paths, and
harvesting point outside of containment 411 while keeping an
indexer inside of containment and straddling containment with a
penetration pathway [is] a rearrangement impermissibly
change[ing] Russell’s operating function.
App. Br. 13 (emphasis added).
The change in operating function proposed by the Examiner is
substantial.
App. Br. 13.
Moving tubes 460 and 420 along with flow control
gear 450 out of drywell 20 and across containment 411, such that
they no longer reside directly below gears 310a/b and
instrumentation tube 50, changes these functions. Specifically,
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Application 13/477,244
the Examiner’s proposed modification must relocate tubes 460
and 420 upwardly and laterally out of drywell 20 and
containment 411, the access barrier. . . . The move eliminates
the direct and entirely vertical positioning of tube 420 below
instrumentation tube 50 down to control gear 450 to receive
targets therefrom. This, in turn, destroys the opposing
gravitational balance between tubes 460 and 420 down into
drywell 20. . . . Thus, moving tubes 460 and 420 and control
gear 450 eliminates functionality of the system of Russell.
App. Br. 14 (emphasis added, original emphasis omitted).
5. Appellants contend the Examiner erred in rejecting claim 1
under 35 U.S.C. § 103(a) because:
[T]he evidence of record teaches away from the access-barrier
interaction recited in claim 1 and imported into Russell by the
Examiner. . . . Access barriers in nuclear reactor facilities, like
containment 411 in Russell, are critical structures that provide
important containing and safety functions by movement
restriction. See Russell, 1 [0024] (“containment structure 411
. . . serves to contain radioactivity in the case of an accident and
prevent access to reactor 10”); Specification | [0016] (identical).
Russell acknowledges that even just withdrawing materials from
containment 411 has pressurization and security complications.
See Russell, 1 [0050]. Moreover, agency regulation, Russell,
and the instant application all require operators to avoid
movement through access barriers like containment 411 during
operation.
App. Br. 15 (emphasis added).
6. Appellants contend the Examiner erred in rejecting claim 28
under 35 U.S.C. § 103(a) because:
[T]he Examiner has not accounted for the recited containment
building access barrier in Cabell.
App. Br. 17 (emphasis added).
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Issues on Appeal
Did the Examiner err in rejecting claims 8, 21, 22, and 28 under
35U.S.C. § 112, first paragraph?
Did the Examiner err in rejecting claim 8 under 35U.S.C. § 112,
second paragraph?
Did the Examiner err in rejecting claims 1 and 28 as being
unpatentable under 35 U.S.C. § 103(a) because the prior art does not render
obvious the limitations argued by Appellants?
ANALYSIS
We have reviewed the Examiner’s rejections in light of Appellants’
arguments that the Examiner has erred.
Rejections under 35 U.S.C. § 112
As to Appellants’ above contention 1, we agree with Appellants.
As to Appellants’ above contention 2, we agree with Appellants. The
Examiner’s reasoning is premised on concluding, as to the disclosed
“retaining device” and “retention mechanism,” “Appellant has defined both
of these terms and used them in a non-interchangeable manner.” Ans. 4.
The Examiner is mistaken. In describing Figure 3 at paragraph 30,
Appellants alternate between describing items 610, 620, and 630 as
“retaining mechanisms” (Spec. 31—32) and “retention mechanisms”
(Spec. 36). The terms have clearly been used interchangeably. We disagree
with the Examiner’s conclusion (Ans. 3) that the Specification lacks support
for the claimed “retainer” limitation.
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Rejections under 35 U.S.C. § 103
As to Appellants’ above contention 3, we disagree. Appellants
acknowledge the Court’s decision in KSR Int’l Co. v. Teleflex Inc., 550 U.S.
398 (2007) (Reply Br. 8, n.2). However, Appellants’ argument that there
must be a motivation to combine the references overlooks the Court’s
decision in KSR. Appellants do not take into account the Court specifically
repudiated that such a “motivation” is required to show obviousness. KSR,
550 U.S. at 415 (“We begin by rejecting the rigid approach of the Court of
Appeals.”). Rather, the requirement is only that the Examiner show “the
subject matter as a whole would have been obvious at the time the invention
was made to a person having ordinary skill in the art to which said subject
matter pertains.” KSR, 550 U.S. at 406 (quoting 35 U.S.C. § 103) (emphasis
added); id. at 418 (“[T]he analysis need not seek out precise teachings
directed to the specific subject matter of the challenged claim, for a court
can take account of the inferences and creative steps that a person of
ordinary skill in the art would employ.”).
Additionally, Appellants have not presented evidence sufficient to
show that combining the prior art was “uniquely challenging or difficult for
one of ordinary skill in the art” or “represented an unobvious step over the
prior art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR, 550 U.S. at 418—19). Nor have Appellants
presented evidence sufficient to show that any of the incorporations yielded
more than expected results.
As to Appellants’ above contention 4, we disagree. Appellants attack
the Examiner’s rejection by arguing the “proposed modification must
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relocate tubes 460 and 420 upwardly and laterally out of drywell 20 and
containment 411, the access barrier.” App. Br. 14.
We find no basis in the Examiner’s rejection for this argument.
Rather, we conclude an artisan reading the gravity drive teaching of Russell
at paragraph 54 would instead understand that the tubes 460 and 420 must be
relocated downwardly out of drywell 20 and containment 411. “A person of
ordinary skill is also a person of ordinary creativity, not an automaton.”
KSR, 550 U.S. at 421. Appellants argue a rejection rationale the Examiner
never set forth (and which is contrary to ordinary creativity). This form of
argument is unavailing to show Examiner error.
As to Appellants’ above contention 5, we disagree. As the United
States Court of Appeals for the Federal Circuit has counseled:
A reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from
following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant.
... [I]n general, a reference will teach away if it suggests that the
line of development flowing from the reference’s disclosure is
unlikely to be productive of the result sought by the applicant.
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994). “A reference does not teach
away, however, if it merely expresses a general preference for an alternative
invention but does not criticize, discredit, or otherwise discourage
investigation into the invention claimed.” DePuy Spine, Inc. v. Medtronic
Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quotation
omitted).
Our review of Russell finds that Appellants’ argument, that Russell
teaches away from moving irradiation targets across the access barrier,
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overlooks that paragraph 50 of Russell explicitly teaches moving irradiation
targets across the access barrier.
Removal mechanism 415 may push irradiation targets
250 from the holding tube 420 into an exit tube 410. Exit tube
410 may pass through containment 411 in a variety of ways,
including through known piping and/or hatchways in the dry well
20 that exits containment 411 and/or through a specially-
designed passage through containment 411. Such a passage may
be specially designed to sustain containment pressurization
and/or security.
Russell 1 50 (emphasis added). Here, Appellants at most have merely
shown that Russell might be argued to teach a preference for movement
restriction. However, even if we agree, that is not sufficient to “teach away”
from the claimed combination.
As to Appellants’ above contention 6, we disagree that the Examiner
has erred. Appellants’ argument is contradicted by Appellants’ admission:
FIG. 1 is an illustration of a conventional nuclear reactor
pressure vessel 10 ... Reactor pressure vessel 10 is
conventionally contained within an access barrier 411 that
serves to contain radioactivity in the case of an accident and
prevent access to reactor 10 during operation of the reactor 10.
As defined herein, an access barrier is any structure that prevents
human access to an area during operation of the nuclear reactor
due to safety or operational hazards such as radiation. As such,
access barrier 411 may be a containment building sealed and
inaccessible during reactor operation.
Spec. 116. Given that Appellants’ argument contradicts Appellants’
admission and the argument makes no attempt to explain that contradiction,
we see no reason to reverse the Examiner’s rejection based on this argument.
Separately, Appellants quote paragraph 24 of Russell (App. Br. 15) as
describing a “containment structure 411.” We deem this teaching in Russell
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to be more than sufficient to render obvious a “containment building” as a
building is an ancient and ubiquitous form of a structure.
CONCLUSIONS
(1) Appellants have established that the Examiner erred in rejecting
claim 8 as failing to comply with the enablement requirement of 35 U.S.C.
§112, first paragraph.
(2) Appellants have established that the Examiner erred in rejecting
claim 8 under 35 U.S.C. § 112, second paragraph, as being indefinite.
(3) Appellants have established that the Examiner erred in rejecting
claims 21, 22, and 28, as failing to comply with the written description
requirement of 35 U.S.C. § 112, first paragraph.
(4) The Examiner has not erred in rejecting claims 1—3, 5—12, and 21—
28 as being unpatentable under 35 U.S.C. § 103(a).
(5) Claims 1—3, 5—12, and 21—28 are not patentable.
DECISION
The Examiner’s rejection of claim 8, as failing to comply with the
enablement requirement of 35 U.S.C. § 112, first paragraph, is reversed.
The Examiner’s rejection of claim 8 as being indefinite under
35 U.S.C. § 112, second paragraph, is reversed.
The Examiner’s rejection of claims 21, 22, and 28, as failing to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph, is reversed.
The Examiner’s rejections of claims 1—3, 5—12, and 21—28 as being
unpatentable under 35 U.S.C. § 103(a) are affirmed.
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No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED
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