Ex Parte Lockamon et al

Patent Trial and Appeal Board

Apr 29, 2013

11069535 (P.T.A.B. Apr. 29, 2013)

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
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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
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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
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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

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