Ex Parte Greenspan et al

Patent Trial and Appeal BoardMay 20, 2016

12657726 (P.T.A.B. May. 20, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/657,726 01125/2010 123334 7590 05/24/2016 TerraPower, LLC 330 120th Ave. NE, Suite 100 Bellevue, WA 98005 FIRST NAMED INVENTOR Ehud Greenspan 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. 0608-03 2-00 l -C00002 1535 EXAMINER O'CONNOR, MARSHALL P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 05/24/2016 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 EHUD GREENSPAN, RODERICK A. HYDE, ROBERT C. PETROSKI, JOSHUA C. WALTER, THOMAS ALLAN WEA VER, CHARLES WHITMER, LOWELL L. WOOD JR., and GEORGE B. ZIMMERMAN Appeal2014-003934 Application 12/657,726 Technology Center 3600 Before LYNNE H. BROWNE, ERIC C. JESCHKE, and PAUL J. KORNICZKY, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Ehud Greenspan et al. (Appellants) appeal under 35 U.S.C. Â§ 134 from the rejection of claims 294, 299, and 300. We have jurisdiction under 35 U.S.C. Â§ 6(b). We affirm. Appeal2014-003934 Application 12/657,726 CLAIMED SUBJECT MATTER Claim 294, reproduced below, is illustrative of the claimed subject matter: 294. A method of operating a nuclear fission traveling wave reactor, the method comprising: migrating at least one nuclear fission fuel assembly in a first direction from a first location in a nuclear fission traveling wave reactor core to a second location in the nuclear fission traveling wave reactor core, the second location being different from the first location; and migrating the at least one nuclear fission fuel assembly in a second direction from the second location, the second direction being different from the first direction. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hyde US 2008/0123796 Al May 29, 2008 REJECTIONS 1 I. Claim 300 stands rejected under 35 U.S.C. Â§ 112, second paragraph, as indefinite for failing to particularly point out and distinctly claim the subject matter which applicants regard as the invention. II. Claims 294, 299, and 300 stand rejected under 35 U.S.C. Â§ 102(b) as anticipated by Hyde. 1 The rejection of claims 294, 299, and 300 under 35 U.S.C. Â§ 112, first paragraph, is withdrawn. Ans. 2. 2 Appeal2014-003934 Application 12/657,726 DISCUSSION Rejection I The Examiner determines that the metes and bounds of claim 300 cannot be determined because "it is unclear how the claimed locations relate to the 'geometrical position in the reactor core'." Final Act. 5. In support of this determination, the Examiner notes that "it is unclear how the locations are selected and how that location is 'based on position in the reactor core'. No direction is given to a person, having skill in the art, attempting to make/use the claimed invention how to base location on reactor core position." Id. at 5---6. Responding to this rejection, Appellants note that the Specification "includes at least twenty-two (22) recitations of non-limiting examples wherein 'inward locations 32 and outward locations 30 may be based on geometrical proximity to a central portion of the reactor core 12. "' Appeal Br. 24. Given these and other examples, Appellants contend that "those skilled in the art would understand what is - and what is not - claimed when Claim 300 is read in light of the specification." Id. at 25; see also Reply Br. 6. The test for definiteness under 35 U.S.C. Â§ 112, second paragraph, is whether "those skilled in the art would understand what is claimed when the claim is read in light of the specification." Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). However, although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. In re Van Geuns, 988 F.2d 1181, 1184 (Fed. Cir. 1993). 3 Appeal2014-003934 Application 12/657,726 In this case, the Examiner is correct that the language of claim 300 is so unclear as to render the metes and bounds of the claim indefinite when the claim language is read is light of the Specification, because the claim sets forth no frame of reference by which to determine the locations. Geometrical position necessarily requires some sort of frame of reference. One skilled in the art, armed with the at least twenty-two examples noted by Appellants, would still not know how to determine what geometrical position on which to base the first and second location. We sustain the Examiner's decision rejecting claim 300 as indefinite. Rejection II Claims 294 and 299 Appellants argue claims 294 and 299 together. See Appeal Br. 25-34. We select independent claim 294 as the representative claim, and claim 299 stands or falls with claim 294. The Examiner finds that Hyde discloses each and every limitation of claim 294. See Final Act. 6-7. In particular, the Examiner finds that Hyde discloses "migrating the at least one nuclear fission fuel assembly in a second direction (1054) from the second location, the second direction being different from the first direction (Fig. lOB)." Id. at 6. Contending that the Specification "defines 'migrate' as 'shuffled between or among locations within a reactor core'," Appellants argue that "the Examiner's interpretation of the claim term 'migrating' did not consider the specification and is, therefore, per se unreasonable." Appeal Br. 31 (citing Spec. p. 13, 11. 1-2), 30; see also Reply Br. 8-9. 4 Appeal2014-003934 Application 12/657,726 For an inventor to act as his or her own lexicographer, the definition must be set forth in the specification "with reasonable clarity, deliberateness, and precision." Renishaw PLC v. Marposs Societa per Azioni, 158 F.3d 1243, 1249 (Fed. Cir. 1998). The Specification states, "the nuclear fission fuel may be migrated or shuffled between or among locations within a reactor core. Such migration or shuffling of at least some of the nuclear fission fuel may be performed to achieve objectives as discussed below." Spec., p. 13, 11. 1-3. These statements do not set forth a clear, deliberate and precise definition of the claim term "migrating." Rather, these statements, at most, indicate that migrating and shuffling are similar movements. Thus, the Specification does not define migrating as shuffling between or among locations within a reactor core, as Appellants contend. See Appeal Br. 31. "[I]n determining the ordinary and customary meaning of the claim term as viewed by a person of ordinary skill in the art, it is appropriate to consult a general dictionary definition of the word for guidance." Comaper Corp. v. Antee, Inc., 596 F.3d 1343, 1348 (Fed. Cir. 2010) (citing Phillips v. AWH Corp., 415 F.3d 1303, 1322-23 (Fed. Cir. 2005) (en bane)). An ordinary and customary meaning of "migrate" is "to shift, as from one system, mode of operation, or enterprise to another." Dictionary.com, http://www.dictionary.com/browse/migrate?s=t (last accessed May 12, 2016). Hyde describes movement of material 1050 from locations into and out of proximity to bumfront 1030. See Hyde i-f 127. Thus, Hyde discloses migrating at least one nuclear fission fuel assembly as claimed. Appellants further argue that "Hyde et al. does not teach or suggest each and every element as set forth in claim[] 294." Appeal Br. 32; Reply 5 Appeal2014-003934 Application 12/657,726 Br. 10. In support of this argument, Appellants contend that Hyde teaches removing the nuclear fission fuel assembly out of the reactor rather than moving it in a second direction from the second location. See Appeal Br. 33; see also Reply Br. 10-11. Responding to this argument, the Examiner notes that "[ n Jo portion of the claim prevents the assembly from being removed from the core when moving in the second direction. The claim merely states that the full assembly is migrated in a second direction." Ans. 4. The Examiner is correct. Although, claim 294 requires that the second location be in the reactor core, it does not preclude migration of the at least one nuclear fission fuel assembly to a location outside of the reactor core when the nuclear fission fuel assembly is migrated from the second location in the second direction. See Appeal Br. 36. Thus, Appellants do not apprise us of error. For these reasons, we sustain the Examiner's decision rejecting independent claim 294 and claim 299, which depends therefrom. Claim 300 Having determined that claim 300 is indefinite, we cannot sustain the rejection of this claim under 35 U.S.C. Â§ 102(b) because to do so would require speculation as to the scope of the claim. See In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that the Board erred in affirming an anticipation rejection of indefinite claims). DECISION The Examiner's rejection of claim 300 under 35 U.S.C. Â§ 112, second paragraph, is AFFIRMED. 6 Appeal2014-003934 Application 12/657,726 The Examiner's rejection of claims 294 and 299 under 35 U.S.C. Â§ 102(b) as anticipated by Hyde is AFFIRMED. The Examiner's rejection of claim 300 under 35 U.S.C. Â§ 102(b) as anticipated by Hyde is REVERSED. 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). See 37 C.F.R. Â§ 1.136(a)(l )(iv). AFFIRMED 7