Ex Parte Livingston

Patent Trial and Appeal Board

Nov 1, 2016

12473957 (P.T.A.B. Nov. 1, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
12/473,957 05/28/2009 Peter Moshchansky Livingston
26294 7590 11/03/2016
TAROLLI, SUNDHEIM, COVELL & TUMMINO LLP,
1300EASTNINTH STREET, SUITE 1700
CLEVELAND, OH 44114
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.
NG(ST)019139 US PRI 1589
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
11/03/2016 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):
rkline@tarolli.com
docketing@tarolli.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte PETER MOSHCHANSKY LIVINGSTON
Appeal2013-009519
Application 12/473,957
Technology Center 3600
Before MICHAEL L. HOELTER, JILL D. HILL, and
PAUL J. KORNICZKY, Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Peter Moshchansky Livingston ("Appellant") appeals under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1-14, 21, and 22. 1
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
1 Claims 15-20 have been canceled. Appeal Br. 24 (Claims App.).
Appeal2013-009519
Application 12/473,957
CLAIMED SUBJECT MATTER
Independent claims 1 and 9 are pending. Claim 1, reproduced below,
illustrates the subject matter on appeal.
1. A method of reducing the storage time of spent nuclear
fuel, the method comprising:
providing a sample of spent nuclear fuel; and
irradiating the spent nuclear fuel with substantially
collimated gamma ray photons having energy levels of about 10
Me V to about 15 Me V for a predetermined time period to initiate
a photofission reaction in remaining fertile fissile material in the
spent nuclear fuel.
REJECTIONS
I. Claims 1-3 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Brown (US 2002/0169351 Al; pub. Nov. 14, 2002). Ans. 4.
II. Claim 8 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown. Final Act. 5.
III. Claims 5 and 9 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown in view of Magill (US 5,966,418; iss. Oct. 12,
1999) or Baxter (US 5,513,226; iss. Apr. 30, 1996). Final Act. 6.
IV. Claims 6, 10, 12, 21, and 22 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brown and Baxter. Final Act. 7.
V. Claim 4 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Brown, Soloway (US 2002/0186805 Al; pub. Dec. 12,
2002), and Brau et al. (US 4,189,686; iss. Feb. 19, 1980). Final Act. 8.
VI. Claims 7, 11, 13, and 14 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Brown, Baxter, Soloway, and Brau. Final Act.
8.
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Application 12/473,957
Rejection I
ANALYSIS
Appellant argues claims 1-3 as a group. Appeal Br. 9. We select
claim 1 as representative. Claims 2 and 3 stand or fall therewith.
Regarding claim 1, the Examiner finds that Brown discloses
accelerating decay of nuclear waste or spent nuclear fuel, which inherently
reduces the storage time of the spent nuclear fuel. Ans. 4--5. The Examiner
also finds that Brown accelerates decay by irradiating "with gamma ray
photons having energies up to 15 Me V /photon" and that "the gamma rays
can be produced from a betatron (see paragraph 0051), which inherently
produces a substantially collimated beam." Id. at 5.
Appellant argues that the Examiner fails to identify structure in Brown
that corresponds to the claimed substantially collimated gamma ray photons.
Appeal Br. 7. Appellant argues that the gamma rays generated by Brown's
betatron impacting electrons onto a high-Z target cannot be substantially
collimated gamma rays. Id. According to Appellant, "comparing a beam of
substantially collimated gamma ray photons to the beam of a Betatron (as
described by Brown) would be similar to comparing a beam of a laser (the
substantially collimated gamma ray photons) to a beam of a flashlight (the
beam of a Betatron)." Id. at 8.
The Examiner responds that Brown's gamma ray source may be non-
coherent, but must be collimated to be directed. Ans. 10-11 (citing Brown
i-f 51 (generated "high energy gamma rays ... [are] directed at the nucleus of
the radioactive isotope to be remediated" (emphasis added))). Further,
regarding Appellant's argument that laser beams differ from flashlights, the
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Application 12/473,957
Examiner responds that "both flashlights and lasers can be collimated."
Ans. 11.
Appellant disagrees, responding that "[t]here is no requirement in ...
Brown that the incoherent gamma rays be collimated to be directed at a
target, as contended by the Examiner." Reply Br. 3. According to
Appellant, Brown's gamma rays need not be collimated, because random
probability would cause Brown's gamma rays "to (very inefficiently) collide
with the nucleus of the radioactive isotope without collimation, as long as
the high-Z target and the radioactive isotope were located sufficiently close
together." Id.
Appellant has not shown, by a preponderance of the evidence, that the
Examiner erred in finding that one skilled in the art would understand that
Brown's gamma rays, which are directed at the nucleus of the radioactive
isotope to be remediated, are collimated. Appellant has failed to proffer a
definition of collimated that excludes, as alleged, the beam of a flashlight.
We therefore sustain Rejection I.
Rejection II
Appellant makes no argument that claim 8 would be patentable over
Brown if claim 1 is anticipated by Brown. We therefore sustain Rejection II.
Rejection III
Claims 5 and 9 recite, inter alia, "placing the sample of spent nuclear
fuel in a nuclear reactor with active nuclear material and control material;
and removing portions of the control material until the reactor reaches near
criticality prior to irradiating."
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Application 12/473,957
The Examiner finds that Brown discloses spent nuclear fuel being
disposed in a nuclear reactor during irradiation by gamma ray photons, and
that Magill and Baxter teach destruction of plutonium via irradiation in
operating reactors that inherently includes: "a) active nuclear material and
control material in the reactor; b) removing control material (e.g., control
rods) to operate near criticality." Final Act. 6. The Examiner concludes that
"removing portions of the control material" is an obvious "matter of design
choice and/or optimization" because "[r]emoving the control material prior
to irradiating with the gamma rays would result in a simpler operation
compared to removing said material while performing the irradiation, but it
would result in a longer time of irradiation, to achieve the desired final
result." Id. at7.
We discern no disclosure in Brown, Baxter, or Magill of removing
control material to operate near criticality. Further, while removing control
material until the reactor reaches near criticality prior to irradiating may
indeed be an obvious matter of design choice/optimization, the Examiner's
conclusory statement to that effect appears to be based, at best, on
Appellant's own teachings. In certain situations, it can be obvious to
optimize a result effective variable "[ w ]hen there is a design need or market
pressure to solve a problem, and there are a finite number of identified
predictable solutions, a person of ordinary skill has good reason to pursue
the known options within his or her technical grasp." See In re Antonie, 559
F.2d 618, 620 (CCPA 1977); see also KSR Int'! Co. v. Teleflex Inc., 550
U.S. 398, 420 (2007). The result effective variable, however, must first be
recognized in the prior art. The Examiner has not shown where the art
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Application 12/473,957
recognized any result effective variable that would be optimized by
operating near criticality. We therefore do not sustain Rejection III.
Rejection IV
Claims 6, 10, 12, 21, and 22 depend from claims 5 and 9. For the
reason set forth above in Rejection III, we do not sustain Rejection IV.
Rejection V
Claim 4 recites "irradiating the spent nuclear fuel rod with a gamma
ray free electron laser (FEL)." The Examiner finds that Soloway discloses
using a laser "for generating photons to irradiate a radioactive sample," and
Brau discloses "that a free electron laser (FEL) offers the advantage of
tenability and scalability to high powers." Final Act. 8. The Examiner
concludes that it would have been obvious to modify Brown's process to use
a free electron laser, which would provide the advantages of "tunability and
scalability to high powers," and that such a modification "is no more than
the use of a well-known expedient within the nuclear art." Id.
Appellant argues that Soloway' s technology and technique could not
be employed in Brown, because "Soloway is limited to low-energy X-ray
photons that have too little energy to significantly reduce the storage time of
spent nuclear fuel," and Soloway's mirrors could not "reflect the about
lOMeV gamma rays" as claimed. Appeal Br. 16; Livingston Decl. 2 i-f 15.
The Examiner responds that Soloway is only relied on to disclose a
laser, and that the claimed energy levels are disclosed by Brown. Ans. 15.
Appellant challenges the combinability of Brown and Soloway, and
the Examiner fails to address Appellant's argument that one skilled in the art
2 Declaration of Peter M. Livingston, dated December 19, 2012.
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would not employ Soloway' s technology and technique in Brown. Lacking
a response thereto, we are persuaded by Appellant's argument, and we
therefore do not sustain Rejection V.
Rejection VI
Like claim 4, claims 7, 11, 13, and 14 recite "a gamma ray free
electron laser (PEL)," and/or the use thereof. The Examiner makes the same
findings and conclusion discussed above regarding the disclosure of Brown,
Soloway, and Brau. Final Act. 8-9. For the reasons set forth above in
Rejection V, we do not sustain Rejection VI.
DECISION
We AFFIRM the rejection of claims 1-3 under 35 U.S.C. § 102(b) as
anticipated by Brown.
We AFFIRM the rejection of claim 8 under 35 U.S.C. § 103(a) as
unpatentable over Brown.
We REVERSE the rejection of claims 5 and 9 under 35 U.S.C.
§ 103(a) as unpatentable over Brown in view of Magill or Baxter.
We REVERSE the rejections of claims 6, 10, 12, 21, and 22 under
35 U.S.C. § 103(a) as unpatentable over Brown and Baxter.
We REVERSE the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Brown, Soloway, and Brau.
We REVERSE the rejection of claims 7, 11, 13, and 14 under 35
U.S.C. § 103(a) as unpatentable over Brown, Baxter, Soloway, and Brau.
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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). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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