Ex Parte Seeman et al

Patent Trial and Appeal BoardDec 28, 2012

11976005 (P.T.A.B. Dec. 28, 2012)

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. 11/976,005 10/19/2007 Russell Seeman 187159-6 (HDP#8564-000103 7527 30593 7590 12/31/2012 HARNESS, DICKEY & PIERCE, P.L.C. P.O. BOX 8910 RESTON, VA 20195 EXAMINER RAEVIS, ROBERT R ART UNIT PAPER NUMBER 2856 MAIL DATE DELIVERY MODE 12/31/2012 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 RUSSELL SEEMAN, THOMAS ALFRED CAINE, and THANH TU ____________________ Appeal 2010-0070491 Application 11/976,005 Technology Center 2800 ____________________ Before ERIC B. CHEN, TREVOR M. JEFFERSON, and LARRY J. HUME, Administrative Patent Judges. HUME, Administrative Patent Judge. DECISION ON APPEAL This is a decision on appeal under 35 U.S.C. § 134(a) of the Final Rejection of claims 1-4 and 8. Claims 5-7 have previously been withdrawn. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. 1 The Real Party in Interest is the General Electric Company. (App. Br. 1.) Appeal 2010-007049 Application 11/976,005 2 STATEMENT OF THE CASE 2 The Invention Appellants’ invention is directed to an apparatus for monitoring deposition of a noble metal in a nuclear reactor and, in particular, an embodiment of the present invention is directed to a surface crevice deposition monitor for the reactor. Spec. p. 1, Title, and ¶ [0002]. Exemplary Claim Claim 1 is an exemplary claim representing an aspect of the invention which is reproduced below (emphasis added): 1. A surface crevice deposition monitor for a nuclear reactor, comprising: a flow conditioner arranged between a securing mechanism and an anchor, the flow conditioner in the shape of a wedge having two surfaces that define planes which intersect at an acute angle; and at least one sample holder connected between the securing mechanism and flow conditioner. Prior Art The Examiner relies upon the following prior art in rejecting the claims on appeal: Niskin US 3,242,740 Mar. 29, 1966 Wood US 5,303,600 Apr. 19, 1994 2 Our decision refers to Appellants’ Appeal Brief (“App. Br.,” filed July 23, 2009); Reply Brief (“Reply Br.,” filed Nov. 16, 2009); Examiner’s Answer (“Ans.,” mailed Oct. 15, 2009); Final Office Action (“FOA,” mailed April 6, 2009); and the original Specification (“Spec.,” filed Oct. 19, 2007). Appeal 2010-007049 Application 11/976,005 3 Rockwood US 6,672,830 B2 Jan. 6, 2004 Rejections on Appeal Claims 1-4 and 8 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Wood and Niskin in view of Rockwood. ISSUE Appellants argue (App. Br. 6-12; Reply Br. 1-3) that the Examiner’s unpatentability rejection of claim 1 under 35 U.S.C. § 103(a) over Wood and Niskin in view of Rockwood is in error. These contentions present us with the following issue: Did the Examiner err in finding that Appellants’ claimed surface crevice deposition monitor for a nuclear reactor is taught or suggested by the combination of Wood and Niskin in view of Rockwood, particularly that Wood teaches or suggests a “flow conditioner in the shape of a wedge having two surfaces that define planes which intersect at an acute angle,” as recited in claim 1? ANALYSIS We have reviewed the Examiner’s rejections in light of Appellants’ arguments that the Examiner has erred. We agree with Appellants’ conclusions with respect to claim 1, and we disagree with (1) the findings and reasons set forth by the Examiner in the action from which this appeal is taken and (2) the reasons and rebuttals set forth by the Examiner in the Examiner’s Answer in response to Appellants’ Arguments. We highlight and address specific findings and arguments regarding claim 1 for emphasis as follows. Appeal 2010-007049 Application 11/976,005 4 Appellants have not argued the Examiner’s combination of the disparate elements of the water samplers of Wood and Niskin with the centrifugal pump of Rockwood to render Appellants’ claimed “surface crevice deposition monitor for a nuclear reactor” unpatentable. However, we disagree with the Examiner’s finding that Wood teaches or suggests a “flow conditioner in the shape of a wedge having two surfaces that define planes which intersect at an acute angle,” as recited in claim 1. Ans. 3-4, and 5-9. In particular, whether or not we accept the Examiner’s finding (Ans. 4) that Rockwood provides a non-traditional definition of a “wedge,”3 neither Wood nor Rockwood teach or suggest that the beveled edges in the “wedge” purportedly taught by Wood (and by Rockwood) “define planes which intersect at an acute angle,” as required by claim 1. We do not find this to be the case, as the Examiner apparently ignores the “flat” portion on the top of the beveled annular portion, illustrated and described below. In contrast, we find that the “wedge” allegedly taught by Wood has planes (i.e., the beveled edge and interior surface of Wood’s sampler, see below) that intersect at an obtuse angle rather than an acute angle, and that the “tapered annular locking wedge” 235 in Rockwood is similarly arranged. Further explanation of our finding can be found with reference to The Examiner’s markup of Wood’s FIG. 7 (Ans. 7), further annotated below: 3 I.e., “anti-vibration tapered annular locking wedge 235” (see Rockwood col. 7:12-13 and as depicted in Rockwood FIG. 5, element 235), that is different from that disclosed by Appellants (see Spec. ¶ [0048] and FIG. 4, wedge-shaped flow conditioner 70). Appeal 2010-007049 Application 11/976,005 5 (See footnote below.4) (See footnote below.5) Wood Figure 7 (showing cross-section of the sampler of Fig. 6, as originally annotated by the Examiner, and as further annotated by footnote herein). 4 We note that the angled wall and left wall identified by the Examiner do not intersect at all, but instead have a flat, horizontal portion on the top of the beveled annular section, which can be more readily seen in Wood, FIG. 6, also provided infra. 5 We also note that the interior surface of Wood’s water sampler actually intersects the beveled surface at an obtuse angle. Examiner’s assertion. Ans. 7 Appeal 2010-007049 Application 11/976,005 6 The Examiner incorrectly states in his annotation to Wood’s FIG. 7 (reproduced above) that “WEDGE with left wall and angle wall that define planes which intersect at 45 degrees.” As can be seen in Wood’s FIG. 7, the “angled wall” and “left wall” characterized by the Examiner do not intersect at all, much less intersect so as to “define planes which intersect at 45 degrees,” as required by claim 1. Wood’s FIG. 6 better illustrates the flat, horizontal annular portion to which we refer: Wood Figure 6 (showing an enlarged perspective view of the illustrative sampler indicating the basic subassemblies). Thus, having found at least one error in the Examiner’s characterization of the prior art and related claim construction, we are unable to sustain the unpatentability rejection of claim 1. Further, claims 2-4 and 8 Flat, horizontal annular portion on the top of the beveled section. Appeal 2010-007049 Application 11/976,005 7 variously and ultimately depend from claim 1, such that we cannot sustain the unpatentability rejection of these claims. CONCLUSION The Examiner erred with respect to the unpatentability rejection of claims 1-4 and 8 under 35 U.S.C. § 103(a) over Wood and Niskin in view of Rockwood, and we do not sustain the rejection. DECISION The decision of the Examiner to reject claims 1-4 and 8 is reversed. REVERSED ke