Ex Parte HU

Patent Trial and Appeal Board

May 29, 2014

12035722 (P.T.A.B. May. 29, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MIN-HSIUNG HU
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Appeal 2012-005071
Application 12/035,722
Technology Center 3600
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Before JOHN C. KERINS, EDWARD A. BROWN and JILL D. HILL,
Administrative Patent Judges.

KERINS, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2012-005071
Application 12/035,722

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STATEMENT OF THE CASE
Min-Hsiung Hu (Appellant) seeks our review under 35 U.S.C. § 134
of the final rejection of claims 1-16. App. Br. 2. We have jurisdiction under
35 U.S.C. § 6(b).
We AFFIRM-IN-PART and enter NEW GROUNDS OF
REJECTION under 37 C.F.R. § 41.50(b).

THE INVENTION
Appellant’s invention is directed to a steam generator. Claims 1 and
10 are independent. Claim 1 is illustrative, and is reproduced below.
1. A steam generator, comprising:
a feedwater inlet;
a tube bundle spaced from the feedwater inlet;
a loose parts collector disposed between the feedwater
inlet and the tube bundle, the loose parts collector having a
water overflow edge; and
a sludge collector having a water outlet disposed
downstream of the overflow edge of the loose parts collector.

THE REJECTIONS
Claims 1 and 3 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by or, in the alternative, under 35 U.S.C. § 103(a) as being
unpatentable over, Figure 2 of Appellant’s application, which is labeled as,
and taken as, admitted prior art (“AAPA2”) in view of Figure 3 of
Appellant’s application, which is also labeled as, and taken as, admitted
prior art (“AAPA3”).
Claims 2 and 4-9 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA2 in view of AAPA3.
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Claims 10-16 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA2 in view of AAPA3 and further in view of Van
Sickel (US 3,716,451, issued Feb. 13, 1973).

ANALYSIS
Claims 1 and 3 as anticipated by AAPA2 in view of AAPA3.
The Examiner finds that AAPA2 discloses a steam generator
including all limitations of the claimed invention including a sludge
collector 68 having a water outlet 66 disposed downstream of an overflow
edge 62 of a loose parts collector 60. Ans. 5, 11.
While AAPA2 does not designate any structure by the numeral 66,
Appellant acknowledges that AAPA2 illustrates the loose parts collector
described in Application Serial No. 11/563,742, filed November 28, 2006,
and assigned to the Assignee of this application, which is now U.S. Patent
No. 7,434,546 B2.1 App. Br. 4. Figure 2 of the ‘546 patent designates a
pipe of the loose parts collector 60, which pipe is also shown in the loose
parts collector 60 of AAPA2, with reference numeral 66. Id. at 8-9.
Appellant contends that pipe 66 is a drain that is used for draining
water off the top cover of the sludge collector during servicing of the steam
generator and thus, if anything, the drain 66 is a water outlet to the loose
parts collector rather than the sludge collector. App. Br. 5, 9. Appellant
further contends that since the sludge collector water outlet is clearly defined
in the Specification by how it is used, to interpret that term as encompassing

1Issued October 14, 2008 (the ‘546 patent). See also paragraphs [0001] and
[0030] of the instant application.
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drain pipe 66 is not consistent with the teachings in the Specification and
would not be reading the claims in light of the Specification. Id. at 5.
In response, the Examiner further elaborates that since limitations
from the Specification are not to be read into the claims, and the
Specification provided no explicit definition of the term “sludge collector
water outlet,” the pipe 66 as seen in AAPA2 could be reasonably interpreted
as meeting the claim limitation calling for a sludge collector water outlet
since it “is used to drain water on the lower deck plate 40 of the sludge
collector or on the cover 69 of the sludge collector.” Ans. 12, 14.
The ‘546 patent, in describing the structure corresponding to AAPA2,
explicitly discloses that a pipe or pipes 66 may be provided to drain the
water from the lower deck plate 402, which forms the bottom surface of the
sludge collector 68, and we find that the pipe or pipes are reasonably
construed as meeting the limitation calling for a water outlet for the sludge
container. This water outlet is positioned downstream of the overflow edge
of the loose parts collector, a finding which is not contested by Appellant.
Claim 1 requires nothing more from a structural or functional standpoint.
The rejection of claim 1 under 35 U.S.C. § 102 is thus sustained. No
separate arguments were advanced with respect to claim 3, and claim 3 thus
falls with claim 1.

2 While Figure 2 of the ‘546 patent illustrates drain pipe 66 as being
positioned to drain water from the sludge collector top plate, which is
effectively the lower surface of the loose parts collector, the accompanying
text clearly evinces that the drain pipe may alternatively be positioned to
drain water from the lower deck plate 40. ‘546 patent, col. 5, ll. 28-36.
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Because this affirmance of the anticipation rejection directed to claims
1and 3 is also based upon explicit textual disclosures from the ‘546 patent3,
which the Examiner draws from, but does not specifically cite to, we
denominate the affirmance as to claims 1 and 3 as a NEW GROUND OF
REJECTION under 37 C.F.R. § 41.50(b).

Claims 1 and 3 unpatentable over AAPA2 in view of AAPA3.
The Examiner takes an alternative position based on AAPA2 not
showing water outlets 78,4 but that AAPA35 teaches a sludge collector that
has a water outlet 78. Ans. 5, 11. The Examiner concludes that it would
have been obvious to one of ordinary skill in the art at the time of the
invention to construct the sludge collector of AAPA2 with such a water
outlet in order to facilitate the outflow of water that enters the collector.
Ans. 6. The Examiner notes that the combination of AAPA2 and AAPA3
yields a construction in which the water outlet 78 is disposed downstream of
the overflow edge of the loose parts collector. Id.
Appellant argues that, even if combined, AAPA2 and AAPA3 would
not yield a sludge collector water outlet 78 disposed downstream of the
overflow edge 62 of the loose parts collector as the Examiner asserts, but
would rather yield the embodiment illustrated in Figure 5 as described in the
current Specification. App. Br. 5-6.

3 Acknowledged by Appellant as corresponding to AAPA2. App. Br. 4, 8-9.
4 We note, however, that Appellant acknowledges that there must be such an
outlet(s) in order for the sludge collector to work. Reply Br. 1.
5 Appellant also acknowledges that AAPA2 already includes the traditional
sludge collector illustrated and described in AAPA3 and paragraph [0031] of
the instant application, as well as in Figure 2 of the ‘546 patent. App. Br. 4-
5, 8-9.
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The Examiner responds that the term “downstream” is a functional
rather than a structural limitation determined based on an unspecified
direction of fluid flow which flow has various directions within the steam
generator. Ans. 13. Furthermore, the Examiner contends that considering
the flow to be that directly above the cover 69 as shown in AAPA3 rather
than that between the cover 69 and the plate 40, the outlet is disposed
downstream of the overflow edge of the loose parts collector. Id. at 13-14.
However, the Examiner has not established by a preponderance of
evidence that the combination of AAPA2 and AAPA3 would yield a sludge
collector water outlet 78 disposed downstream of the overflow edge 62.
When operating properly and as intended, water outlet 78 would discharge
water from the sludge collector underneath the overflow edge 62, a position
which is upstream, and not downstream of the overflow edge.
The rejection, as formulated by the Examiner, of claims 1 and 3 as
being unpatentable over AAPA2 and AAPA3 is not sustained.

Claims 2 and 4-9 unpatentable over AAPA2 in view of AAPA3.
Claim 2
Considering claim 2, the Examiner finds that AAPA2 teaches a loose
parts collector 60 which is a vertical wall that extends in an upward direction
away from a lower deck plate 40 of the steam generator 10 and surrounds a
feedwater pool 80 fed by the feedwater inlet 52 and a sludge collector water
outlet 66 is disposed downstream of an interior side of the vertical wall but
does not show water outlets 78. Ans. 6-7. The Examiner, as in the
obviousness rejection of claim 1 discussed above, concludes that it would
have been obvious to employ a water outlet or outlets 78 shown in AAPA3
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on the sludge collector 68 shown in AAPA2, and that such outlet or outlets
would be downstream of the interior side of the vertical wall of the parts
collector.
Appellant, for its part, presents essentially the same arguments as are
advanced with respect to the obviousness rejection of claim 1. For the same
reasons noted above in the discussion of the obviousness rejection of claims
1 and 3, the rejection of claim 2 as formulated by the Examiner does not
establish that the proposed modification to add water outlets 78 to the upper
surface of the sludge collector would result in the water outlet being
downstream of the inner surface of the vertical wall of the parts collector.
However, inasmuch as AAPA2 does teach a loose parts collector 60
which is a vertical wall that extends in an upward direction away from a
lower deck plate 40 of the steam generator 10 and surrounds a feedwater
pool 80 fed by the feedwater inlet 52 and, as noted in the discussion of claim
1 above, teaches a sludge collector water outlet disposed downstream of an
interior side of the vertical wall, claim 2 is anticipated by AAPA2. A
disclosure that anticipates a claim under 35 U.S.C. § 102 also renders the
claim unpatentable under 35 U.S.C. § 103, for anticipation is the epitome of
obviousness. See In re Pearson, 494 F.2d 1399, 1402 (CCPA 1974); and In
re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). As such, the rejection of
claim 2 under 35 U.S.C. § 103(a) is sustained.
For the same reasons given above with respect to the affirmance of the
§ 102 rejection of claim 1, we denominate the affirmance as to claim 2 as a
NEW GROUND OF REJECTION under 37 C.F.R. § 41.50(b).

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Claims 4-9
Appellant maintains that neither AAPA2 or AAPA3 teaches a
peripheral edge of the cover being radially spaced from the vertical wall at at
least a number of circumferential locations and having a vertically extending
ledge that surrounds at least a portion of the cover and terminates in an
upward direction to form the overflow edge with at least portions of the
vertically extending ledge being spaced from the interior side of the vertical
wall to form a conduit therebetween that forms the water outlet of the sludge
collector. App. Br. 9-10.
The Examiner counters that the vertical wall taught by AAPA2 is
interpreted to include the walls of the sludge collector water outlet (“drain”)
66 or, in other words, outlet 66 is a portion of the vertical wall and the
vertically extending portion above the drain is interpreted to be the vertically
extending ledge. Ans. 14-15. In so doing, according to the Examiner,
AAPA2 teaches a peripheral edge of the cover being radially spaced from
the vertical wall ( i.e., portion of the water outlet 66) at at least a number of
circumferential locations and having a vertically extending ledge that
surrounds at least a portion of the cover and terminates in an upward
direction to form the overflow edge with at least portions of the vertically
extending ledge being spaced from the interior side of the vertical wall to
form a conduit therebetween that forms the water outlet 66 of the sludge
collector. Id.
However, the interior side of the vertical wall/outlet 66 and vertical
extending ledge as so interpreted are not spaced from each other to form a
conduit therebetween that forms an outlet. Thus, the rejection of claim 4 is
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not sustained. Claims 5-9 depend from claim 4, and the rejection is also not
sustained as to these claims.

Claims 10-16 unpatentable over AAPA2, AAPA3, and Van Sickel
The Examiner finds that the limitations of claims 10-16 are the same
as those of claims 1-9 discussed supra but for the requirement of the steam
generator being part of a nuclear reactor power generation facility. Ans. 9.
The Examiner relies upon Van Sickel as supplying a teaching of a steam
generator being used in a nuclear power generation facility. Id. The
Examiner then concludes that it would have been obvious to employ a steam
generator of the type disclosed in AAPA2 and AAPA3 in a nuclear power
plant in order to generate steam, which drives the turbines and ultimately
leads to the generation of power. Id. at 10.
Appellant acknowledges that, with the exception of the recitation of a
nuclear power generation facility, claim 10 corresponds to claim 1, claims
11-13 correspond to claims 2-4, claim 14 corresponds to claims 6 and 7,
claim 15 corresponds to claim 8, and claim 16 corresponds to claim 9.
Appellant argues that, in addition to the reasons previously noted for claims
1-9, the reliance on Van Sickel does not cure the deficiencies previously
identified as to AAPA2 and AAPA3. App. Br. 10-11.
As noted previously, Appellant’s arguments fail to evidence error in
the Examiner’s position relative to claims 1-3. As such, the rejection of
claims 10 and 12, corresponding to claims 1 and 3, and the rejection of claim
11, corresponding to claim 2, as being unpatentable, are sustained. The
rejection of claims 13-16, corresponding to claims 4-9, as being
unpatentable, is not sustained.
Appeal 2012-005071
Application 12/035,722

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For the same reasons noted above with respect to the rejections of
claims 1-3, this affirmance of the rejection directed to claims 10-12 is
denominated as a NEW GROUND OF REJECTION under 37 C.F.R.
§ 41.50(b).
DECISION
We AFFIRM the rejection of claims 1 and 3 under 35 U.S.C. § 102(b)
as being anticipated by AAPA2, and the rejection is denominated as a NEW
GROUND OF REJECTION.
We REVERSE the alternative rejection of claims 1 and 3 under 35
U.S.C. § 103(a) as being unpatentable over AAPA2 in view of AAPA3.
We AFFIRM the rejection of claim 2 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA2, and the rejection is denominated as a
NEW GROUND OF REJECTION.
We REVERSE the rejection of claims 4-9 under 35 U.S.C. § 103(a) as
being unpatentable over AAPA2 in view of AAPA3.
We AFFIRM the rejection of claims 10-12 under 35 U.S.C. § 103(a)
as being unpatentable over AAPA2, in view of AAPA3 and Van Sickel, and
the rejection is designated as a NEW GROUND OF REJECTION.
We REVERSE the rejection of claims 13-16 under 35 U.S.C. § 103(a)
as being unpatentable over AAPA2 in view of AAPA3 and Van Sickel.
As indicated above, this decision contains new grounds of rejection
pursuant to 37 C.F.R. § 41.50(b) which provides that “[a] new ground of
rejection . . . shall not be considered final for judicial review.” This section
also provides that Appellant, WITHIN TWO MONTHS FROM THE DATE
OF THE DECISION, must exercise one of the following two options with
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respect to the new grounds 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 application be reheard
under § 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. § 1.136(a).

AFFIRMED-IN-PART; 37 C.F.R. § 41.50(b)

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