Ex Parte McCarty et al

Patent Trial and Appeal BoardMay 9, 2013

11735612 (P.T.A.B. May. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE 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. 11/735,612 04/16/2007 Jeffrey M. McCarty ARF2007-010 2320 26353 7590 05/09/2013 WESTINGHOUSE ELECTRIC COMPANY, LLC 1000 Westinghouse Drive Suite 141 Cranberry Township, PA 16066 EXAMINER BRAINARD, TIMOTHY A ART UNIT PAPER NUMBER 3646 MAIL DATE DELIVERY MODE 05/09/2013 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 JEFFREY M. MCCARTY and JIM SPARROW ____________ Appeal 2011-002137 Application 11/735,612 Technology Center 3600 ____________ Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and BART A. GERSTENBLITH, Administrative Patent Judges. GERSTENBLITH, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-002137 Application 11/735,612 2 STATEMENT OF THE CASE Jeffrey M. McCarty and Jim Sparrow (“Appellants”) appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1 and 3-11.1 We have jurisdiction under 35 U.S.C. § 6(b). The Claimed Subject Matter Claims 1 and 11 are independent. Claim 1 is illustrative of the claimed subject matter and is reproduced below. 1. A control rod spider assembly for use with a nuclear fuel assembly, said control rod spider assembly including a spider structure and at least one control rod, an attachment joint for fastening the control rod to the spider structure, said attachment joint comprising: a hollow connecting finger of said spider structure having a central bore defined therethrough from a bottom end to a top end thereof, an upper end portion of said bore being smaller in diameter than a bottom portion of said bore so as to define a downwardly facing annular shoulder on the interior of said finger between said bottom and top end portions; an elongated upper end plug of said control rod having a first upper axial, reduced diameter portion with a male or female fastener profile formed on or within an axial section thereof, at least a portion of said upper axial reduced diameter portion fastener profile extending substantially to or through said top end of said connecting finger when the upper end plug is inserted through said connecting finger from said bottom end thereof and said elongated upper end plug having a second axial portion having a male fastener profile formed on or along an axial section of the exterior thereof that mates with a corresponding female profile on an interior wall of the connecting finger when the upper end plug is inserted through the connecting finger from said bottom end thereof, the second 1 Appellants previously cancelled claim 2. See Amendment (dated July 8, 2008) at 3, 5. Appeal 2011-002137 Application 11/735,612 3 axial portion fastener profile having one of either a right hand or a left hand oriented closure and the reduced diameter upper axial portion fastener profile having the other of the right hand or left hand oriented closure; fastening means insertable to engage at least a portion of said upper reduced diameter axial fastener profile section of said upper end plug once said upper end plug has been inserted through said connecting finger and the upper end plug lower portion fastener profile is engaged with the corresponding fastener profile on the connecting finger, said fastening means having an internal fastener profile that mates with the fastener profile on the upper end plug reduced diameter upper axial portion when engaged; and anchoring means for rotationally affixing the fastener means to the connecting finger. Claim 11 is directed to a control rod cluster control assembly comprising, inter alia, “means for anchoring the fastener mechanism to the connecting finger.” References The Examiner relies upon the following prior art references: Shallenberger US 4,855,100 Aug. 8, 1989 Matzner US 5,608,768 Mar. 4, 1997 Rejection The Examiner makes the following rejection: I. Claims 1 and 3-112 are rejected under 35 U.S.C. § 103(a) as unpatentable over Shallenberger and Matzner. 2 The Examiner’s Answer originally listed claims 1-11 as subject to this rejection, but the Examiner later acknowledged that claim 2 was previously cancelled. Office Communication (mailed July 29, 2010) at 1. Appeal 2011-002137 Application 11/735,612 4 SUMMARY OF DECISION We REVERSE. OPINION The Examiner concluded that the combination of Shallenberger and Matzner would have rendered the subject matter of claims 1 and 3-11 obvious to one of ordinary skill in the art. Ans. 4-10. With respect to claim 1, the Examiner found, inter alia, that Shallenberger discloses an “anchoring means 102 for rotationally affixing the fastener means 104 to the connecting finger 76.” Id. at 5 (citing Shallenberger, fig. 20; col. 8, l. 64 – col. 9, l. 2). With respect to claim 11, the Examiner found, inter alia, that Shallenberger discloses “means for anchoring 102 the fastener mechanism 104 to the connecting finger 76.” Id. at 9 (citing Shallenberger, fig. 20). Thus, the Examiner found that Shallenberger’s (1) nut 102 corresponded to the claimed “anchoring means” (claim 1) and “means for anchoring” (claim 11); and (2) screw thread coil insert 104 corresponded to the claimed “fastener means” (claim 1) and “fastener mechanism” (claim 11). Id. at 5, 9. Appellants assert several arguments directed to the rejection of claims 1, 6, 9, and 11. App. Br. 5-9. In particular, Appellants contend that Shallenberger does not teach anchoring the locking nut to the connecting finger. Id. at 9. The “anchoring means for rotationally affixing the fastener means to the connecting finger” of claim 1, and the “means for anchoring the fastener mechanism to the connecting finger” of claim 11, are presumed to be drafted in means-plus-function format because the “claim element[s] contain[] the word ‘means’ and recite[] a function,” and the claims do not “recite[] sufficient structure to perform the claimed function.” Envirco Corp. v. Appeal 2011-002137 Application 11/735,612 5 Clestra Cleanroom, Inc., 209 F.3d 1360, 1364 (Fed. Cir. 2000) (citing Al- Site Corp. v. VSI Int’l, Inc., 174 F.3d 1308, 1318 (Fed. Cir. 1999)). The first step in construing a means-plus-function claim limitation “is to define the particular function of the claim limitation.” In re Aoyama, 656 F.3d 1293, 1296 (Fed. Cir. 2011) (quoting Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d 1327, 1333 (Fed. Cir. 2004)). The next step in construing a means- plus-function claim limitation “is to look to the specification and identify the corresponding structure for that function.” Id. at 1297 (quoting Golight, 355 F.3d at 1334). As explained in In re Donaldson, “the PTO may not disregard the structure disclosed in the specification corresponding to such language when rendering a patentability determination.” In re Donaldson Co., 16 F.3d 1189, 1195 (Fed. Cir. 1994). Rather, the PTO must look to the Specification and construe the “means” language recited in the claim as limited to the corresponding structure disclosed in the Specification and equivalents thereof. Id. The Specification discloses that “the nose cap screw is tack welded at 70 to the connecting finger 48” thus anchoring/affixing the nose cap screw and the connecting finger. E.g., Spec., para. [0037]; see also App. Br. 3, 4 (referring to “anchoring means 70” and “means 70 for anchoring,” respectively). The Examiner has not made any analysis under In re Donaldson explicit in the record before us. See, e.g., MPEP § 2181. It is not apparent from the record before us why Shallenberger’s nut 102 is the same as, or equivalent to, the anchoring structure described in Appellants’ Specification. Thus, the Examiner has failed to show that “anchoring means” and “means for anchoring” of claims 1 and 11 are disclosed by Shallenberger. Appeal 2011-002137 Application 11/735,612 6 Accordingly, we do not sustain the Examiner’s rejection. DECISION We reverse the Examiner’s decision rejecting claims 1 and 3-11. REVERSED rvb