Ex Parte Keegan et al

Patent Trial and Appeal BoardOct 29, 2012

11743844 (P.T.A.B. Oct. 29, 2012)

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. 11/743,844 05/03/2007 C. Patrick Keegan NPP2007-002 7636 26353 7590 10/29/2012 WESTINGHOUSE ELECTRIC COMPANY, LLC 1000 Westinghouse Drive Suite 141 Cranberry Township, PA 16066 EXAMINER LEACH, ERIN MARIE BOYD ART UNIT PAPER NUMBER 3646 MAIL DATE DELIVERY MODE 10/29/2012 PAPER 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. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte C. PATRICK KEEGAN, JAMES H. SCOBEL, RICHARD F. WRIGHT ____________ Appeal 2010-009419 Application 11/743,844 Technology Center 3600 ____________ Before LINDA E. HORNER, KEN B. BARRETT, and CHARLES N. GREENHUT, Administrative Patent Judges. HORNER, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE C. Patrick Keegan et al. (Appellants) seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-5 and 7-17. The Examiner objected to claim 6 as being dependent upon a rejected base claim, Appeal 2010-009419 Application 11/743,844 2 but indicated that this claim would be allowable if rewritten in independent form. Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. THE INVENTION Appellants’ claimed invention “relates to an apparatus for providing thermal insulation around a nuclear reactor pressure vessel while at the same time permitting the reactor vessel to be surrounded passively with cooling water in the event of a severe accident in which the core material relocates.” Spec., para. [0001]. Claim 1, reproduced below, is representative of the subject matter on appeal. 1. Apparatus for thermally insulating a vessel during normal operating conditions and cooling the vessel in the event that an accident condition has a potential for raising the vessel temperature above a predefined limit, comprising: a vessel having a bottom head and a sidewall extending upwardly therefrom; thermal insulation surrounding the vessel and spaced from the bottom head and the sidewall; and at least one inlet door hingedly attached to the thermal insulation, the inlet door being sealed by gravity against a stop on the thermal insulation during normal operation and floatable with a given buoyancy when immersed in a fluid to move to an open position to permit the fluid liquid to gain access to the space between the vessel and the thermal insulation under predetermined abnormal operating conditions to cool the vessel without the inlet door providing an obstruction to flow of the fluid in the open position. Appeal 2010-009419 Application 11/743,844 3 THE EVIDENCE The Examiner relies upon the following evidence: Clemens US 4,429,329 Jan. 31, 1984 Coomes US SIR1 - H558 Dec. 6, 1988 Schreiber US 5,699,394 Dec. 16, 1997 Hollmann US 5,889,830 Mar. 30, 1999 THE REJECTIONS Appellants seek review of the following rejections: 1. Claims 14 and 15 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. 2. Claims 1-5, 7-9, 11, 13, and 16 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schreiber and Hollmann. 3. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Schreiber, Hollmann, and Coomes. 4. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable over Schreiber, Hollmann, and Clemens. ISSUES The issues presented by this appeal are: Has the Examiner met the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by claim 14 is not adequately enabled by the description of the invention provided in the Specification? 1 “US SIR” stands for United States Statutory Invention Registration. Appeal 2010-009419 Application 11/743,844 4 Does Hollmann teach an inlet door that is hingedly attached to the thermal insulation and sealed against a stop on the thermal insulation during normal operation and floatable with a given buoyancy when immersed in a fluid to move to an open position, as called for in claim 1? ANALYSIS Rejection of claims 14 and 15 under 35 U.S.C. § 112, first paragraph The Examiner determined that the Specification does not enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make or use the invention commensurate in scope with claim 14, which recites that “the cooling air path only exits the reactor cavity approximately at the nozzle positions.” Ans. 5. In particular, the Examiner determined that some cooling air introduced through the tunnel 33 and into the reactor cavity 19 could circulate from the cavity 19 and back into the tunnel 33, such that the tunnel 33 would serve as another exit for some of the cooling air. Id. When rejecting claims for lack of enablement “the PTO bears an initial burden of setting forth a reasonable explanation as to why it believes that the scope of protection provided by that claim is not adequately enabled by the description of the invention provided in the specification of the application[.]” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993) (citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for compliance with the enablement requirement is whether the disclosure, as filed, is sufficiently complete to enable one of ordinary skill in the art to make and use the claimed invention without undue experimentation. In re Appeal 2010-009419 Application 11/743,844 5 Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). To evaluate whether a disclosure would require undue experimentation is a legal conclusion reached by weighing many factual considerations including: (1) the quantity of experimentation necessary, (2) the amount of direction or guidance presented, (3) the presence or absence of working examples, (4) the nature of the invention, (5) the state of the prior art, (6) the relative skill of those in the art, (7) the predictability or unpredictability of the art, and (8) the breadth of the claims. Id. at 737 (citations omitted). As noted by Appellants, the Specification describes that the cooling air path begins at the bottom of the reactor cavity 19 when the cooling air is introduced through the tunnel 33, and flows upwardly in the direction of arrow 35 along the walls 31 and through the space 29 between the walls and the thermal barrier 23, and then exits through ducts 63, which extend through the reactor nozzle support 17. App. Br. 6 (citing Spec., paras. [0021], [0023]). The Examiner has not met the initial burden of showing that the disclosure would require undue experimentation in order to enable one of ordinary skill to make and use the claimed invention. In particular, the Examiner has not set forth facts tending to show that one of ordinary skill in the art, with some experimentation, would not be able to make and use an apparatus that allows air to flow only along the path described in Appellants’ Specification. “Enablement is not precluded by the necessity for some experimentation .... However, experimentation needed to practice the invention must not be undue experimentation. The key word is ‘undue,’ not ‘experimentation.”’ In re Wands, 858 F.2d at 736-37 (internal citation Appeal 2010-009419 Application 11/743,844 6 omitted.) Accordingly, we reverse the rejection of claims 14 and 15 under 35 U.S.C. § 112, first paragraph. Rejection of claims 1-5, 7-9, 11, 13, and 16 under 35 U.S.C. § 103(a) over Schreiber and Hollmann Claims 7, 8, 13, and 16 depend ultimately from claim 6, which the Examiner indicated contains allowable subject matter. As such, claims 7, 8, 13, and 16, by virtue of their dependency from claim 6, likewise must have been implicitly determined to contain allowable subject matter. Accordingly, we reverse the rejection of claims 7, 8, 13, and 16 under 35 U.S.C. § 103(a). With regard to the remaining claims subject to this rejection (i.e., claims 1-5, 9, and 11), it is uncontested that Schreiber fails to teach an inlet door hingedly attached to the thermal insulation, sealed by gravity, and floatable to move to an open position as called for in claim 1. Ans. 6; App. Br. 7. The Examiner relied on Hollmann to teach “an inlet door 15 that is hingedly attached to the thermal insulation 37/38 (figure 1) and sealed against a stop 39/31 on the thermal insulation 37/38 during normal operation and floatable with a given buoyancy when immersed in a fluid to move to an open position. . . .” Ans. 6. Appellants argue that the Examiner’s reliance on Hollmann is misplaced because “[t]he only thing that Hollmann contributes is that it describes a hinged closure mechanism with no teaching of how such a mechanism could be employed in the arrangement described in Schreiber et al.” App. Br. 8 (arguing that Hollmann’s closure element 15 is hingedly Appeal 2010-009419 Application 11/743,844 7 connected to the flood pipe 31, not to the thermal insulation and that Hollmann’s closure element 15 is not floatable with a given buoyancy when immersed in a liquid to move to an open position). Hollmann teaches using a hinged closure element 15 at an inlet to a chamber 2 formed between a reactor vessel 3 and a thermal insulating barrier 37. Hollmann’s closure element 15 includes a bale closure 16 that acts through a bale 42 to press a cap 40 firmly into a ball sealing seat 39 of a flood pipe 31. Hollmann, col. 7, ll. 63-66; fig. 4. The bale 42 is connected to the flood pipe 31 by a hinge on the lower end and by a tightening screw 17, which has a melting bolt 43, on the upper end. Hollmann, col. 7, l. 66 – col. 8, l. 1; fig. 4. The closure element 15 thus opens as a function of temperature. Hollmann, col. 7, ll. 63-64. Based on this disclosure in Hollmann, Appellants are correct that Hollmann’s closure element 15 is not hingedly attached to the thermal insulation 37/38. Rather, Hollmann’s closure element 15 is hingedly attached to the end of the flood pipe 31. Also, Hollmann’s closure element 15 is designed to fall away from the flood pipe 31 when the melting bolt 43 melts. We found no discussion in Hollmann regarding the buoyancy of the closure element 15. Regardless of any buoyancy Hollmann’s door may exhibit, due to the fact that the hinge is located on the bottom of the door, the door is not “floatable . . . to an open position.” As such, the Examiner incorrectly found that Hollmann’s closure element 15 is “hingedly attached to the thermal insulation 37/38 (figure 1) and sealed against a stop 39/31 on the thermal insulation 37/38 during normal operation and floatable with a given buoyancy when immersed in a Appeal 2010-009419 Application 11/743,844 8 fluid to move to an open position.” Ans. 6. The Examiner’s findings as to the teachings of Hollmann are not supported by a preponderance of the evidence. Accordingly, we reverse the Examiner’s rejection of independent claim 1 and its dependent claims 2-5, 9, and 11, under 35 U.S.C. § 103(a) as unpatentable over Schreiber and Hollmann. Rejection of claims 10 and 12 under 35 U.S.C. § 103(a) over Schreiber, Hollmann, and Coomes and rejection of claim 17 under 35 U.S.C. § 103(a) over Schreiber, Hollmann, and Clemens Claims 10, 12, and 17 depend from independent claim 1. The remaining grounds of rejection suffer from the same deficiency in the Examiner’s findings as to the teaching of Hollmann, relied upon in the rejection of claim 1. Ans. 12-14. The Examiner does not rely on either Coomes or Clemens to teach an inlet door hingedly attached to the thermal insulation and sealed by gravity and floatable with a given buoyancy when immersed in a fluid to move to an open position, as called for in dependent claim 1. Id. As such, we reverse the rejections of claims 10, 12, and 17 under 35 U.S.C. § 103(a) for the same reasons provided supra in our analysis of claim 1. CONCLUSIONS The Examiner has not met the initial burden of setting forth a reasonable explanation as to why the scope of protection provided by claim 14 is not adequately enabled by the description of the invention provided in the Specification. Hollmann does not teach an inlet door that is hingedly attached to the thermal insulation and sealed against a stop on the thermal insulation during Appeal 2010-009419 Application 11/743,844 9 normal operation and floatable with a given buoyancy when immersed in a fluid to move to an open position, as called for in claim 1. DECISION We REVERSE the decision of the Examiner to reject claims 1-5 and 7-17. REVERSED mls