Ex Parte Lockamon et alDownload PDFPatent Trial and Appeal BoardApr 29, 201311069535 (P.T.A.B. Apr. 29, 2013) Copy Citation 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. 11/069,535 02/28/2005 Brian Glenn Lockamon 12093/10022 8463 26646 7590 04/30/2013 KENYON & KENYON LLP ONE BROADWAY NEW YORK, NY 10004 EXAMINER MONDT, JOHANNES P ART UNIT PAPER NUMBER 2894 MAIL DATE DELIVERY MODE 04/30/2013 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 BRIAN GLENN LOCKAMON, WILLIAM EDWARD ALLMON, STEPHEN FYFITCH, and JOHN CARROLL GRIFFITH ____________________ Appeal 2011-001947 Application 11/069,535 Technology Center 3600 ____________________ Before: CHARLES N. GREENHUT, BRETT C. MARTIN, and NEIL A. SMITH, Administrative Patent Judges. SMITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-001947 Application 11/069,535 2 STATEMENT OF CASE Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 3 and 12-15. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. The claims are directed to limiting pressurized water stress corrosion cracking (PWSCC) in pressurized water reactors. More specifically, the present invention provides a method for limiting stress corrosion cracking in a pressurized water reactor (PWR) through the addition of low-level concentrations of zinc compounds into a reactor coolant system (RCS). Spec. 1. Claim 3, the sole independent claim, reproduced below, is illustrative of the claimed subject matter: 3. A method of controlling pressurized water reactor stress corrosion cracking in an operational pressurized water reactor, comprising: providing a zinc injection system; initially operating an operational pressurized water reactor without injecting zinc into coolant of the operational pressurized water reactor; then determining a need for mitigation of pressurized water reactor stress corrosion cracking in the operational pressurized water reactor; and, after determining the need for mitigation of pressurized water reactor stress corrosion cracking in the operational pressurized water reactor, injecting zinc with the zinc injection system into the pressurized water reactor coolant of the operational pressurized water reactor, wherein the reactor coolant zinc concentration of the operational pressurized water reactor is maintained in a range of 1 part per billion to less than 10 parts per billion, the injection of zinc reducing an incidence of pressurized water reactor stress corrosion cracking in the operational pressurized water reactor. Appeal 2011-001947 Application 11/069,535 3 REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Marble US 2002/0191731 A1 Dec. 19, 2002 P.L. Andresen, Effects of zinc additions on the crack grown rate of sensitized stainless steel and alloys 600 and 182 in 200°C water, Water Chemistry of Nuclear Reactor Systems 6, BNES, London, 169-75 (1992) (hereinafter “Andresen”). H. Kawamura et al., The Effect of Zinc Addition to Simulated PWR Primary Water on the PWSCC Resistance, Crack Growth Rate and Surface Oxide Film Characteristics of Prefilmed Alloy 600, Corrosion 98, 141/1-141/21 (1998) (hereinafter “Kawamura”). REJECTION The Examiner made the following rejection: Claims 3 and 12-15 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over either Andresen or Kawamura in view of Marble.1 Appellants seek our review of the above rejections of Claims 3 and 12-15 under 35 U.S.C. § 134. The Examiner concluded that the subject matter of independent claim 3 would have been obvious over either Andresen or Kawamura in view of Marble. Ans. 4. ANALYSIS The Examiner stated in rejecting independent claim 32: 1 Claim 11 has been cancelled. Claims 1, 2, and 4-10 have been withdrawn. App. Br. 2, Ans. 1. Off. Act. dated Mar. 18, 2010. Not. of App. 2. 2 The dependent claims are not argued separately by Appellants from independent claim 3. These claims stand or fall with Claim 1. 37 C.F.R. § 41.37(c)(1)(vii). Appeal 2011-001947 Application 11/069,535 4 Andresen teaches zinc additions of 5 to 10 parts per billion (ppb) to reduce corrosion crack growth rates in sensitized steel and alloys 600 and 182 in 288 centigrade water. Examiner notes that the temperature of 288 centigrade is characteristic of both boiling water and pressurized water reactors, and that Andresen teaches said zinc addition effects in water. That zinc additions require a system to implement them is inherent, because any method of adding zinc requires a material structure meeting "zinc injection system". A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art or when the ranges of a claimed composition do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05. Ans. 4. The Examiner in an alternative rejection applies Kawamura similarly, in place of Andresen, where Kawamura teaches: that 10 ppb zinc addition is effective in reducing stress corrosion cracking in Primary Water Systems of Pressurized Water Reactors as determined by experimental simulation. See abstract, introduction and page 141/6. This zinc concentration value of 10 ppb only infinitesimally differs from the range as claimed and one of ordinary skill in the art would know that an infinitesimal change in a concentration is expected not to cause any change in the effect. A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art or when the ranges of a claimed composition do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. See MPEP 2144.05. Ans. 5. The Examiner admitted, as Appellants note, that [n]either Andresen nor Kawamura et al teach[es] the limitations of initially operating a pressurized water reactor without injecting zinc into coolant of the operational pressurized water reactor, then determining a need for mitigation of stress corrosion cracking therein, followed by said zinc injecting step into the reactor coolant of said pressurized water reactor. Appeal 2011-001947 Application 11/069,535 5 Ans. 4. The Examiner then relies further on Marble, which in a patent on controlling zinc additions to power reactors (abstract) including pressurized water reactors ([0053])[3], hence art analogous to both Kawamura et al, and to Andresen but specifically including water reactors of the pressurized type, teach a method of control of the zinc concentration comprising balancing the rate of introduction of zinc ions to the rate at which zinc ions are lost to the reactor system (see sections on "Zinc In" ([0015]-[0016]), "Zinc Out" ([0021 ]-[0031]), "Zinc Accumulation" ([0032]-[0064]). Marble uses empirical data including plant operating data ([0013]) and hence the use of these data to establish whether and how much zinc needs to be injected precedes the actual injection. Ans. 4-5. Further, the Examiner noted that “Marble cannot proceed without input from operational data, i.e., cannot proceed without operation of the reactor, on account of which it would have been obvious to allow for a short period of time during which the injection system is not yet in operation while the reactor is.” Id. at 6. The ranges of zinc As noted, following determining a need, injection of zinc is made and “the reactor coolant zinc concentration of the operational pressurized water reactor is maintained in a range of 1 part per billion to less than 10 parts per billion.” Claim 3. Appellants do not directly controvert that the ranges of zinc characterized by the Examiner within the teachings of the references,4 3 The inserts, within the Examiner’s statements, refer to pages within reference. 4 “Andersen [sic] only discloses the results of laboratory experiments investigating the effect of zinc on stress corrosion cracking at a zinc concentration of 5 to 10 ppb, and Kawamura 1998 only discloses the results Appeal 2011-001947 Application 11/069,535 6 or the Examiner’s reliance upon the Manual of Patent Examining Procedure (MPEP) § 2144.05 (8th ed., Rev. 9, Aug. 2012), above, with respect to either reference, Andresen or Kawamura, but disputes the combinations, and particularly the use of Marble by the Examiner in the combination to supply the operating and order of injection. Appellants argue: An analysis of Marble clearly demonstrates that that reference, whether taken alone or in combination with the Andersen and Kawamura 1998, fails to disclose or suggest all of the limitations of the presently claimed method. Marble fails to disclose or suggest the combination of steps recited in the present claims, including at least the following: Initially operating an operational pressurized water reactor without injecting zinc into coolant of the operational pressurized water reactor; Then determining a need for mitigation of pressurized water reactor stress corrosion cracking in the operational pressurized water reactor; and, After determining the need for mitigation of the pressurized water reactor stress corrosion cracking in the operational pressurized water reactor, injecting zinc with the zinc injection system into the pressurized water reactor coolant of the operational pressurized water reactor, as presently claimed. Therefore, the combination of references cited in the Final Office Action fails to provide a prima facie case of obviousness. App. Br. 5-6. We agree with the Examiner as to this aspect of the invention, and the invention as a whole, later discussed, that the ranges of the Andresen and/or the cited Kawamura reference are sufficient to show the range of the zinc addition in the invention: of laboratory experiments investigating the effect of zinc on stress corrosion cracking at a zinc concentration of 10 ppb.” App. Br. 5. Appeal 2011-001947 Application 11/069,535 7 A prima facie case of obviousness typically exists when the ranges of a claimed composition overlap the ranges disclosed in the prior art or when the ranges of a claimed composition do not overlap but are close enough such that one skilled in the art would have expected them to have the same properties. Ans. 5. No unexpected results have been asserted for the very small change in the range, as a result of a phase transition or other criticality. The law is replete with cases in which the difference between the claimed invention and the prior art is some range or other variable within the claims. . . . [I]n such a situation, the applicant must show that the particular range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range. In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir. 1990) (citations omitted). Appellants have not done so. Regarding claims 12-15, which recite similar close ranges, and which Appellants have not argued separately, or argued that the ranges thereof are critical or result in unexpected results. The steps of the claim The Examiner relies upon Marble’s “use of empirical data,” as noted above, “including plant operating data ([0013]) and hence the use of these data to establish whether and how much zinc needs to be injected precedes the actual injection.” Ans. 6. The Examiner notes further that Marble teaches that thereby a stable zinc concentration is established and maintained, but his technique requires input of empirical, hence necessarily operational, data ([0013]), such as feed water flow rate, reactor clean-up flow rate iron concentrations in the feed water, as well as zinc concentration (0014]-[0064]). Because the zinc addition is controlled by balance equations requiring input from operational data it would have been obvious to defer zinc injection until a short Appeal 2011-001947 Application 11/069,535 8 time after initiation of operation when these data can become available from actual operation. One of ordinary skill in the art would not deem the loss of full control during a short period following initiation of operation enough for initial data collection to outweigh the implementation of a system whereby a continuous control of zinc at a required level is guaranteed by said balancing equations requiring operational data, including, for instance the amount of zinc entering through particulate iron in the feedwater independent of zinc injection (see [0033]). While the use of Marble's method is nothing but a use of a known technique (zinc injection based on zinc [input]/output balance analysis) to improve similar devices (the boiling water device focused on in Andresen is similar to the pressurized water reactor included in the method by Marble), as well as a combination of prior art elements according to known methods to yield predictable results (rationales A and C in MPEP 2141, section III) the implementation of the method by Marble cannot proceed without input from operational data, i.e., cannot proceed without operation of the reactor, on account of which it would have been obvious to allow for a short period of time during which the injection system is not yet in operation while the reactor is. Ans. 6-7. Appellants characterize their steps somewhat differently from the Examiner5, emphasizing that it is “[a]fter determining the need for mitigation of pressurized water reactor stress corrosion” that the zinc is injected, and dispute the teachings of Marble. The Examiner had cited the statement in Marble, referring to the teaching of a different patent, wherein it was stated that “[t]he zinc may be added in the form of zinc oxide paste, slurry or aqueous solution.” Appellants argue that Marble makes only one reference to stress corrosion cracking. In paragraph [0004], Marble discloses: 5 The Examiner’s statement: “(1) Initially operating without zinc injection; (2) Then determining a need for zinc injection; [and] (3) [Then] injecting zinc.” Ans. 8. Appeal 2011-001947 Application 11/069,535 9 U.S. Pat. No. 4,950,449 describes the use of zinc ions to remove or lessen deposition of radioactive substances and reduce intergranular stress corrosion cracking in water-cooled nuclear reactors. The zinc may be added in the form of zinc oxide paste, slurry or aqueous solution. Reply Br. 3. Appellants go on to state that, apparently based upon its own research, which it does not include, “[a] review of U.S. Patent No. 4,950,449 shows that that patent discloses the inhibition or prevention of stress corrosion cracking by the continuous injection of zinc oxide,” and thus “Marble does not disclose or suggest the combination” Id., which Appellants say the Examiner admits is not disclosed by either Andresen or Kawamura. However, the described patent is not made of record, as noted, and in any event Marble's statement, which is not inconsistent with its mission disclosure as argued by Appellants, is available for what it teaches and places in the prior art. “The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain.” In re Heck, 699 F.2d 1331, 1332-33 (Fed. Cir. 1983) (quoting In re Lemelson, 397 F.2d 1006, 1009 (CCPA 1968)). Moreover we do not believe that even if the referenced patent is directed to continuous injection, this is not inconsistent with the teaching within Marble that “zinc may be added.” “‘[A] reference must be considered not only for what it expressly teaches, but also for what it fairly suggests,’” In re Bell, 991 F.2d 781, 785 (Fed. Cir. 1993) quoting In re Burckel, 592 F.2d 1175, 1179 (CCPA 1979). Appeal 2011-001947 Application 11/069,535 10 In the Reply Brief, Appellants argue that Marble is focused on determining a loss of zinc in the coolant, and then injecting a sufficient amount of zinc into the coolant to counteract the loss of zinc in the coolant, citing the Abstract of Marble, while arguing that the Examiner was characterizing the invention step as simply requiring "determining a need for zinc injection." Instead, as stated above, the present claims recite in part the steps of: [I]nitially operating an operational pressurized water reactor without injecting zinc into coolant of the operational pressurized water reactor; [T]hen determining a need for mitigation of pressurized water reactor stress corrosion cracking in the operational pressurized water reactor; and, [A]fter determining the need for mitigation of the pressurized water reactor stress corrosion cracking in the operational pressurized water reactor, injecting zinc with the zinc injection system into the pressurized water reactor coolant of the operational pressurized water reactor. Reply Br. 5. The Examiner found that in Marble “[t]he empirical-data use precedes the injection step, the latter being prompted by the empirical data, for which injection there evidently was a need.” Ans. 9. We agree with the Examiner that the claims do not require an initial absence of zinc in the coolant or the absence of prior injections of zinc during a single, continuous operation. The Examiner states that the claims require only an interval during which no zinc is added. We agree with the Examiner’s conclusion that “[t]he claim language does not recite the absence of zinc in the water initially, nor the absence of prior injections of zinc during a single, continuous operation: only an interval during which no zinc is added is implicit from the reference to the use of empirical data.” Ans. 8-9. While Appeal 2011-001947 Application 11/069,535 11 examples in the Specification cited by Appellants apparently begin with no zinc, the claims do not require it, but rather “injecting zinc with the zinc injection system” after determining a need. Claim 3. Therefore, the claim language in question does not distinguish over Marble. There is no time interval recitation, during which interval the reactor is required to be operated before the zinc injection, nor is there any requirement recited of continuous operation including operation prior to injection and including the injection step and subsequent operation. Ans. 8-9. Thus, Appellants’ argument is not commensurate with the scope of the claim, and thus, for that reason, does not demonstrate error in the Examiner’s rejection. See In re Self, 671 F.2d 1344, 1348 (CCPA 1982) (limitations not appearing in the claims cannot be relied upon for patentability). To the extent that Appellants focus on the Examiner’s language reference to “determining a need for [the] zinc,” since the zinc is needed for mitigating stress cracking in the references, we agree with the Examiner’s conclusion that the claimed invention would have been obvious in view of the references. Appellants provide no other reason for the addition of zinc in the references. Finally, Appellants argue that the Andresen and Kawamura references are cumulative of art overcome during prosecution. Appellants state: Andersen [sic] and Kawamura 1998 [the cited Kawamura reference] are merely cumulative to prior art previously cited by the Examiner, and overcome by Appellants during the prosecution of the claims of the application. Thus, Andersen [sic] and Kawamura 1998 add nothing to previously cited references that Appellants previously demonstrated failed to provide any reason for one of ordinary skill in the art to make and/or use the presently claimed method. Appeal 2011-001947 Application 11/069,535 12 App. Br. 7. Referencing a later dated, but earlier cited Kawamura paper, dated 2000,6 according to Appellants, “[i]n response to Appellants amendments and arguments, the Examiner [had withdrawn] the rejection over Kawamura 2000, stating ‘no formal obviousness argument can be maintained based on Kawamura [2000].’ See the Amendment dated July 17, 2009, the Interview Summary dated August 17, 2009, and the Office Action, dated September 25, 2009, page 6.” App. Br. 7. Appellants argue that the disclosures of Kawamura 1998, and Andresen, were merely cumulative to Kawamura 2000 and other references cited during the prosecution of the claims of the present application, asserting that the two Kawamura articles are the same or similar in their pertinent disclosure. App. Br. 7-9, Rep. Br. 9-15. The Examiner asserts that the articles are different and that the references are, for this reason, not cumulative. Ans. 10-11. We do not need to determine the extent of the similarity or differences in the two Kawamura references, 1998 and 2000, for we think that the argument of Appellants that there is some res judicata or similar restriction on the Examiner’s use of what he asserts is a different reference, fails here. The policy and purpose of the patent laws preclude the applicability of any doctrine akin to the judicially-developed doctrine of “res judicata” to bar the granting of patents on inventions that comply with the statute. The same policy and purpose precludes reliance on any such doctrine to force the granting of patents on inventions that do not comply with the statute. The Patent and Trademark Office must have the flexibility to reconsider and correct prior decisions that it may find to have been in error. In re Craig, 411 F.2d 1333 (CCPA 1969). 6 Kawamura et al., 56 CORROSION, 623-37 (Jun. 2000) (Kawamura 2000). Appeal 2011-001947 Application 11/069,535 13 Appellants argued that the Examiner had failed to make a prima facie case of obviousness. As discussed above, the Board discussed this as applied to the range of the zinc within the claim. We note that to the extent that we have not answered this allegation for the full ground of rejection, which has been additionally discussed above under the heading “The steps of the claim,” “[a]ll that is required of the Office to meet its prima facie burden of production is to set forth the statutory basis of the rejection and the reference or references relied upon in a sufficiently articulate and informative manner as to meet the notice requirement of § 132.” As the statute itself instructs, the examiner must “notify the applicant,” “stating the reasons for such rejection,” “together with such information and references as may be useful in judging the propriety of continuing prosecution of his application.” 35 U.S.C. § 132. Here, the Examiner’s discussion of the basis for the rejection met this burden. In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011). DECISION For the above reasons, the Examiner’s rejection of claims 3, and 12- 15 is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011). AFFIRMED hh Copy with citationCopy as parenthetical citation