Ex Parte Nelson et al

Patent Trial and Appeal BoardFeb 27, 2014

11325459 (P.T.A.B. Feb. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE ____________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________ Ex parte DENNIS S. NELSON and STEPHEN J. STUDER ____________ Appeal 2012-003513 Application 11/325,459 Technology Center 3600 ____________ Before MICHAEL C. ASTORINO, WILLIAM A. CAPP, and NEIL T. POWELL, Administrative Patent Judges. ASTORINO, Administrative Patent Judge. DECISION ON APPEAL Appeal 2012-003513 Application 11/325,459 2 STATEMENT OF THE CASE The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims 1-11 and 16-22. We have jurisdiction over the appeal under 35 U.S.C. § 6(b). We REVERSE. Claimed Subject Matter Claims 1, 5, and 9 are independent. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. In a control rod having a plurality of elongated members for absorbing neutrons within a nuclear reactor to control a nuclear reaction, each elongated member comprising: a cylindrical inner capsule configured to contain neutron absorbing material therein; and an absorber tube enclosing the cylindrical inner capsule, the absorber tube having an outer surface with two opposing generally flat, planar, mating sides each of which is configured to mate flushly with a planar mating side of an adjacent absorber tube without the existence of a gap between the mated absorber tubes, the opposing flat, planar, mating sides each being located directly in between respective adjacent rounded corners that are convex in relation to the center of the capsule, wherein a line bisecting each of the flat, planar, mating sides is substantially collinear with a central axis of the control rod. Rejections Claims 1-9 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ledford ‘912 (US 5,719,912, iss. Feb. 17, 1998) and Holden (US 5,812,623, iss. Sep. 22, 1998). Claim 10 is rejected under 35 U.S.C. § 103(a) as unpatentable over Ledford ‘912, Holden, and Ledford ‘318 (US 5,706,318, iss. Jan. 6, 1998). Appeal 2012-003513 Application 11/325,459 3 Claims 1, 5, 9, and 16-22 are rejected under 35 U.S.C. § 103(a) as unpatentable over Holden and Cearly (US 5,064,602, iss. Nov. 12, 1991). OPINION Obviousness over Ledford ‘912 and Holden, and Obviousness over Ledford ‘912, Holden, and Ledford ‘318 Claim 1 recites, “an absorber tube . . . having an outer surface with two opposing generally flat, planar, mating sides . . . each being located directly in between respective adjacent rounded corners that are convex in relation to the center of the capsule.” Br., Clms. App’x. The Examiner finds that Ledford ‘912 discloses an “absorber tube 40f having . . . opposing flat, planar mating sides 44f each being located directly in between respective adjacent rounded corners 64 that are convex in relation to the center of the capsule.” Ans. 5-6 (citing Ledford ‘912, fig. 6F and col. 4, ll. 58-64). The Appellants contend that the Examiner’s combination of teachings from Ledford ‘912 and Holden would not have resulted in the absorber tube of claim 1. See Br.1 12-14. To support this contention, the Appellants offer an annotated version of Figure 6F of Ledford ‘912. Br. 13. The annotations include: the letter “A” with an arrow pointing to the surface of tube 40f just above upper left protuberance 44f; the letter “B” with an arrow pointing to the upper left protuberance 44f; and, the letter “C” with an arrow pointing to 1 The Appellants’ Appeal Brief does not have page numbers thereon. We designate page 1 as the page beginning with the caption “IN THE U.S. PATENT AND TRADEMARK OFFICE” and the remaining pages in the Appeal Brief are numbered consecutively therefrom, with the Claims Appendix following thereafter. Appeal 2012-003513 Application 11/325,459 4 the surface of tube 40f just below upper left protuberance 44f. See id. The Appellants point out that “surface ‘C’” is concave in relation to the center of the capsule. See id. In response to the Appellants’ contention, the Examiner offers the following: it is reasonable to interpret the surface labeled “A” to be part of one rounded corner and the surface labeled “C” to be part of the another rounded surface 40f (figure 6F). Thus, adjacent rounded corners can be interpreted as the surface including 2 small concave parts and one large convex part. Said surface is reasonably interpreted as an adjacent rounded corner that is convex in relation to the center of the capsule (figure 6F). Ans. 18. After carefully considering the Examiner’s findings and response to the Appellants’ contention, we cannot ascertain how the Examiner’s findings reasonably read on the aforementioned limitation of claim 1. As such, the Appellants’ contention is persuasive. Additionally, the Examiner does not rely on Holden’s disclosure to teach the aforementioned limitation of claim 1. Therefore, the Examiner’s rejection lacks rational underpinning. Thus, the Examiner’s rejection of claim 1, and its dependent claims, as unpatentable over Ledford ‘912 and Holden is not sustained. As for the remaining independent claims, claim 5 recites a control rod including an “absorber tube” that is identical to the “absorber tube” of claim 1, and claim 9 recites an absorber tube comprising an “elongated member” that is similar to the “absorber tube” of claim 1. Br., Clms. App’x. The Examiner’s rejection of claims 5 and 9 relies on similar findings as discussed above. See Ans. 7-8 and 9-10. For the reasons discussed above, Appeal 2012-003513 Application 11/325,459 5 the Examiner’s rejection of claims 5 and 9, and their respective dependent claims, is not sustained. Additionally, the Examiner’s rejection of claim 10 under Ledford ‘912 and Holden in combination with Ledford ‘318 relies on the findings discussed above. Since claim 10 depends from claim 9 and the Examiner’s findings attributed to Ledford ‘318 do not remedy the deficiency of the Examiner’s rejection of claim 9, we cannot sustain the Examiner’s rejection of claim 10. Obviousness over Holden and Cearly The Examiner finds Holden does not disclose “that the opposing flat, planar, mating sides are each located directly in between respective adjacent rounded corners that are convex in relation to the center of the capsule.” Ans. 12. The Examiner relies on Cearly to remedy the deficiency of Holden with regard to independent claim 1. Ans. 12. The Examiner finds that Cearly discloses “an absorber tube with opposing flat, planar, mating sides located directly in between respective adjacent rounded corners that are convex in relation to the center of the absorber tube (figure 2; column 4, lines 67-68).” Id. The Appellants contend that the opposing mating sides of Cearly’s absorber tubes 200, as depicted in Figure 2 and described in its Specification, are not flat but are rounded. Br. 15-16. The Appellants’ point out that absorber tubes 200 have “rounded ends” (Cearly, col. 4, ll. 66-67), which are not disclosed as flat. The Appellants point out that the absorber tubes 200 have a width of 1.35", a thickness of 0.22", and a radius of curvature of about 0.11". Br. 16 and Cearly, col. 5, ll. 7-9; see also Cearly, Appeal 2012-003513 Application 11/325,459 6 figs. 3-4. Despite the Examiner’s position to the contrary (Ans. 18-19), the Appellants’ contention is persuasive. Alternatively, the Examiner finds that the flat sides of Cearly’s absorber tubes 200 are in between its rounded ends and may be considered the claimed “‘opposing flat, planar, mating sides are each located directly between respective adjacent rounded corners that are convex in relation to the center of the capsule.’” Ans. 19-20. The Examiner determines that “[t]he top and bottom flat opposing sides are configured to mate flushly with a flat side of an adjacent absorber tube.” Ans. 20. However, the Examiner has not explained, and we cannot ascertain how, the flat sides of the absorber tubes 200 could mate. Perhaps by modifying the structure of sheath 110 and the orientation of the absorber tubes 200 such would be geometrically possible, but such a modification and orientation is outside of the scope of Cearly’s disclosure. As such, the Examiner’s alternative finding is unreasonable. For the above reasons, the Examiner’s rejection lacks rational underpinning. Thus, the Examiner’s rejection of claim 1, and its dependent claims, as unpatentable over Holden and Cearly is not sustained. As discussed above, independent claim 5 recites a control rod including an “absorber tube” that is identical to the “absorber tube” of claim 1, and claim 9 recites an absorber tube comprising an “elongated member” that is similar to the “absorber tube” of claim 1. Br., Clms. App’x. See id. The Examiner’s rejection of claims 5 and 9 rely on the same findings as discussed above. See Ans. 13 and 14. For the reasons discussed above, the Examiner’s rejection of claims 5 and 9, and their respective dependent claims, is not sustained. Appeal 2012-003513 Application 11/325,459 7 DECISION We REVERSE the rejections of claims 1-11 and 16-22. REVERSED mls