Ex Parte Connor et al

Patent Trial and Appeal BoardApr 18, 2016

13528557 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE FIRST NAMED INVENTOR 13/528,557 06/20/2012 26353 7590 04/20/2016 WESTINGHOUSE ELECTRIC COMPANY, LLC 1000 Westinghouse Drive Suite 141 Cranberry Township, PA 16066 William Connor 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. NSD2006-009 DIV 3259 EXAMINER BURKE, SEAN P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 04/20/2016 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): guerral@westinghouse.com spadacjc@westinghouse.com coldrerj@westinghouse.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte WILLIAM CONNOR and RACHEL DEVITO 1 Appeal 2014-003600 Application 13/528,557 Technology Center 3600 Before WILLIAM A. CAPP, BRANDON J. WARNER, and AMANDA F. WIEKER, Administrative Patent Judges. WIEKER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE William Connor and Rachel De Vito ("Appellants") appeal under 3 5 U.S.C. Â§ 134(a) from the Examiner's final rejection of claims 1--4 and 8- 14.2 We have jurisdiction over the appeal under 35 U.S.C. Â§ 6(b). We REVERSE and enter a NEW GROUND OF REJECTION under 37 C.F.R. Â§ 41.50(b). 1 According to Appellants, the Real Party in Interest is Westinghouse Electric Company LLC. Appeal Br. 2. 2 Claims 5-7 and 15 have been cancelled. Id. Appeal2014-003600 Application 13/528,557 CLAIMED SUBJECT MATTER The invention concerns an organic compound added to coolant water in a pressurized water reactor. See Spec. i-f 1. Claims 1 and 9 are illustrative of the subject matter on appeal, and recite: 1. A nuclear reactor having a reactor coolant system, the reactor coolant system contains reactor coolant circulating therethrough, and an organic additive is present in the reactor coolant in an amount sufficient to produce elemental carbon, the organic additive is selected from the group consisting of elements of carbon and hydrogen, elements of carbon, hydrogen and nitrogen, elements of carbon, hydrogen and oxygen, and elements of carbon, hydrogen, nitrogen and oxygen, wherein the reactor coolant excludes the presence of inorganic compounds with the exception of a sufficient amount of boric acid to control reactivity, hydrogen to provide reducing conditions, an additive to maintain [pH] in a target control band and trace elements naturally occurring in water. 9. An organic additive for reactor coolant in a primary circuit of a nuclear reactor, consisting of elements of carbon and hydrogen, elements of carbon, hydrogen and nitrogen, elements of carbon, hydrogen and oxygen, and elements of carbon, hydrogen, nitrogen and oxygen, wherein the reactor coolant excludes the presence of inorganic compounds with the exception of a sufficient amount of boric acid to control reactivity, hydrogen to provide reducing conditions, an additive to maintain [pH] in a target control band and trace elements naturally occurring in water, and wherein the organic additive is present in the reactor coolant in an amount sufficient to produce elemental carbon. 2 Appeal2014-003600 Application 13/528,557 Appeal Br. 8-9, Claims App. (emphases added). 3 REJECTION Claims 1--4 and 8-14 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Andresen (US 2002/0080906 Al, pub. June 27, 2002). ANALYSIS Anticipation by Andresen - Claims 1-4 and 8-14 The Examiner finds that Andresen discloses a nuclear reactor coolant with an organic additive selected from the claimed group. Final Act. 8-9 (citing Andresen i-f 39). The cited portion of Andresen discloses that a noble metal, such as platinum, is injected into a pressurized water reactor in the form of an aqueous solution or suspension with, e.g., carboxylic acids. Andresen i-f 39. The Examiner also finds that the reactor coolant excludes the presence of inorganic compounds with the exception of, inter alia, an additive to maintain pH in a target control band. Final Act. 9 (citing Andresen i-f 54). Specifically, the Examiner finds that the platinum introduced into the reactor is an additive to maintain pH in a target control band, as claimed. Ans. 6-7 (citing Andresen i-fi-1 11, 44 ). 3 The Examiner's Advisory Action (dated August 1, 2013) indicates, in contradicting fashion, that proposed amendments (dated July 19, 2013) submitted after the Final Office Action both "will not be entered" and "will be entered" for purposes of the present appeal. Adv. Act. 1. Given the Examiner's treatment of claims 5 and 15 as cancelled, consistent with the proposed amendment, (Adv. Act. 1 (Status of Claims); Ans. 5), we consider the claims as Appellants present them in the Claims Appendix of the Appeal Brief. 3 Appeal2014-003600 Application 13/528,557 Appellants contend that the inclusion of a metal compound, e.g., platinum, in Andresen's additive violates the closed Markush language of Appellants' claim 1 ("selected from the group consisting of: [A], [BJ, [CJ, and [D]"). Appeal Br. 4--5. Appellants contend that the claimed Markush group does not "recite[] any alternatively useable species that include a metal compound." Id. at 5. Appellants also argue that Andresen does not disclose that "the platinum group metal [is added] to achieve a particular pH value or pH range." Reply Br. 3 (disputing the Examiner's citations to Andresen i-fi-f 11, 44). We agree with Appellants. Andresen discloses a reactor coolant additive that includes a metal compound, such as platinum. See Andresen i-fi-135, 39. The inclusion of a metal in the claimed organic additive is not contemplated by the Markush grouping, which utilizes closed, exclusive language. Further, a preponderance of the evidence does not support the Examiner's finding that the added metal compound is included to maintain pH in a target control band. We have reviewed the portions of Andresen cited by the Examiner and we fail to see, and the Examiner has not explained adequately, how the cited portions of Andresen disclose that the added metal compound maintains pH in a target control band. To the contrary, Andresen's paragraph 11 does not disclose pH ranges at all, and Andresen's paragraph 44 discloses only that pH decreases at higher operating temperatures. Andresen i-fi-f 11, 44. Neither portion of Andresen's disclosure supports the finding that the disclosed metal compound is "an additive to maintain pH," as claimed. 4 Appeal2014-003600 Application 13/528,557 Therefore, we reverse the Examiner's rejection of claim 1, and claims 2--4 and 8-14, all of which exclude the presence of a metal compound (with certain exceptions), as discussed above. 4 New Ground of Rejection, 35 US.C. Â§ 112, First Paragraph- Claims 9-14 Pursuant to our authority under 3 7 C.F .R. Â§ 41. 50(b ), we enter the following new ground of rejection. Claims 9-14 are rejected under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. As discussed above, claim 9 recites, in part: 9. An organic additive for reactor coolant in a primary circuit of a nuclear reactor, consisting of elements of carbon and hydrogen, elements of carbon, hydrogen and nitrogen, elements of carbon, hydrogen and oxygen, and elements of carbon, hydrogen, nitrogen and oxygen .... Appeal Br. 8-9, Claims App. (emphasis added); see supra n.4. As drafted, this claim does not recite properly a Markush grouping, which requires the format recited in claim 1, e.g., claiming that an element is "selected from the group consisting of: [A], [BJ, [CJ, and [DJ." Instead, as drafted, claim 9 requires (redundantly) each of the elements recited in the claim. 4 We note that although independent claim 9 does not recite properly a closed Markush group consisting of four organic additives, claim 9 does "exclude[] the presence of inorganic compounds" with the exceptions discussed above regarding claim 1. See Appeal Br. 8-9, Claims App. Therefore, we reverse the rejection of claims 9-14 on the grounds that Andresen includes a metal compound in violation of this clause, despite failing to recite properly a closed Markush group. 5 Appeal2014-003600 Application 13/528,557 Appellants' Specification does not demonstrate possession of that which is claimed, e.g., an organic additive consisting of each of the sets of elements claimed. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane) (citation omitted). Rather, Appellants' Specification discloses only the use of an organic additive consisting of any one claimed set of elements. See, e.g., Spec. i-f 26 ("[I]n alternate embodiments, organic compounds for use in the present invention can include those containing at least carbon and hydrogen, or at least carbon, hydrogen, and oxygen, or at least carbon, hydrogen, and nitrogen, or at least carbon, hydrogen, oxygen, and nitrogen."). Therefore, we find that Appellants' Specification fails to demonstrate that the inventor had possession of the claimed invention, and we reject claim 9, and claims 10-14, which depend therefrom, under 35 U.S.C. Â§ 112, first paragraph. DECISION The rejection of claims 1--4 and 8-14 under 35 U.S.C. Â§ 102(b) as anticipated by Andresen is REVERSED. We enter a NEW GROUND OF REJECTION of claims 9-14 under 35 U.S.C. Â§ 112, first paragraph, as failing to comply with the written description requirement. FINALITY OF DECISION This decision contains a new ground of rejection pursuant to 37 CPR Â§ 41.50(b). 37 CPRÂ§ 41.50(b) provides "[a] new ground of rejection 6 Appeal2014-003600 Application 13/528,557 pursuant to this paragraph shall not be considered final for judicial review." 37 CPRÂ§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: ( 1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the proceeding will be remanded to the examiner .... (2) Request rehearing. Request that the proceeding be reheard under Â§ 41.52 by the Board upon the same record .... No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. Â§ 1.136(a). REVERSED; 37 C.F.R. Â§ 41.50(b) 7