Gary Povirk et al.

Patent Trials and Appeals BoardAug 30, 2019

13794633 - (D) (P.T.A.B. Aug. 30, 2019)

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. 13/794,633 03/11/2013 Gary Povirk 1212-032-003-000000 2304 160517 7590 08/30/2019 FisherBroyles LLC - TerraPower, LLC Joan Schmeichel, IP Operations Manager 15800 Northup Way Bellevue, WA 98008 EXAMINER GARNER, LILY CRABTREE ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 08/30/2019 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): docketing@fisherbroyles.com jeremy.sanders@fisherbroyles.com jschmeichel@terrapower.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE ____________________ BEFORE THE PATENT TRIAL AND APPEAL BOARD ____________________ Ex parte GARY POVIRK, JAMES M. VOLLMER, RYAN N. LATTA, GRANT HELMREICH, and PHILIP SCHLOSS ____________________ Appeal 2018-005021 Application 13/794,633 Technology Center 3600 ____________________ Before FREDERICK C. LANEY, PAUL J. KORNICZKY, and BRENT M. DOUGAL, Administrative Patent Judges. KORNICZKY, Administrative Patent Judge. DECISION ON APPEAL Appeal 2018-005021 Application 13/794,633 2 STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision, as set forth in the Final Office Action dated August 11, 2017 (“Final Act.”), rejecting claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33, and 61–65.2 We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and ENTER NEW GROUNDS OF REJECTION. THE CLAIMED SUBJECT MATTER The claims are directed to a nuclear fuel element. Claims 1 and 16 are the independent claims on appeal. Claim 1, reproduced below with disputed limitations italicized for emphasis, is illustrative of the claimed subject matter: 1. A nuclear fuel assembly including a plurality of fuel elements, wherein each fuel element comprises: a liner disposed exterior to an annular nuclear fuel, the annular nuclear fuel comprising Uranium metal; and a cladding layer disposed exterior to the liner; wherein the liner includes a first region disposed adjacent the annular nuclear fuel and including a first material, and a second region disposed adjacent the cladding layer and including a second material that is a different base material than the first material, wherein the first material is adapted at high burn ups to mitigate interatomic diffusion between the first material and the annular nuclear fuel, the first material and the second material are mechanically bonded around a perimeter interface and adapted at high burn ups to mitigate interatomic diffusion between the first and second material, and the second material is 1 TerraPower, LLC (“Appellant”) is the applicant pursuant to 37 C.F.R. § 1.46, and is identified as the real party in interest. Appeal Brief, dated February 14, 2018 (“Appeal Br.”), at 2. 2 Claims 2–4, 6, 12, 15, 17, 19, 25, 27, 28, 32, and 34–60 are cancelled. Appeal Br. 37–41 (Claims App.). Appeal 2018-005021 Application 13/794,633 3 adapted at high burn ups to mitigate interatomic diffusion between the second material and the cladding. REFERENCES In rejecting the claims on appeal, the Examiner relied upon the following prior art: Spalaris Perkins Taylor US 3,088,893 US 5,247,550 US 5,301,218 May 7, 1963 Sept. 21, 1993 Apr. 5, 1994 Lee Walters US 2009/0141851 A1 US 2011/0194666 A1 June 4, 2009 Aug. 11, 2011 REJECTIONS The Examiner made the following rejections: 1. Claims 1, 5, 7–11, 13, 14, 61, and 62 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Walters, Perkins, and Spalaris.3 2. Claims 16, 18, 20–22, 26, 30, 31, 33, and 63–65 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Perkins, and Spalaris. 3. Claims 23, 24, and 29 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Perkins, Spalaris, and Lee. Appellant seeks our review of these rejections. 3 Claim 10 is not listed in the Examiner’s summary statement of the rejection (see Final Act. 4–5), but is addressed in the substantive discussion of the rejection (see id. at 10, ¶ 30). Appellant addresses the rejection of claim 10. Appeal Br. 5. We treat the absence of claim 10 from the summary statement as a typographical error. Appeal 2018-005021 Application 13/794,633 4 DISCUSSION New Grounds of Rejection Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection for claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65. Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. Independent claims 1 and 16 contain references to a “base material” of certain regions or layers in the liner which is not described in the Specification in such a way to reasonably convey to one skilled in the art that the inventor(s) had possession of the claimed invention. Paragraph 34 of the Specification, for example, states that “at least some of the layers [of the liner] may include the same material while some include different materials.” The Specification, however, does not use the term “base material,” or describe what material is a base material. Thus, based on the current record, we conclude that independent claims 1 and 16 fail to comply with the written description requirement of 35 U.S.C. § 112, first paragraph. Claims 5, 7–11, 13, 14, 18, 20–24, 26, 29–31, 33 and 61–65 depend from these independent claims and, likewise, fail to comply with the written description requirement. Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 also are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention. The references to a “base material” of a region or layer of a liner as recited in claims 1 and 16 are unclear. The Specification does not use or define the Appeal 2018-005021 Application 13/794,633 5 term “base material,” nor is there evidence of what one of skill in the art would understand “base material” to mean. Neither the Specification nor Appellant define the term “base material” or the boundaries of whether the base materials are the same or different. The Specification does not disclose any objective boundaries, such as the proportion/composition of the common metal, for determining whether alloys forming the recited layer or region have “different” base materials. “Claim language employing terms of degree has long been found definite where it provided enough certainty to one of skill in the art when read in the context of the invention.” Interval Licensing, 766 F.3d at 1370 (citations omitted). However, “[t]he claims, when read in light of the specification and the prosecution history, must provide objective boundaries for those of skill in the art.” Id. at 1371 (citing Nautilus, Inc. v. Biosig Instruments, Inc., 134 S. Ct. 2120, 2130 & n.8 (2014) (additional citation omitted)); see Enzo Biochem Inc. v. Applera Corp., 599 F.3d 1325, 1332 (Fed. Cir. 2010) (When a “word of degree” is used, a patent must provide a “standard for measuring that degree.”). Here, we conclude that independent claims 1 and 16 fail to comply with 35 U.S.C. § 112, second paragraph, by failing to particularly point out and distinctly claim the subject matter which the inventor or joint inventor regards as the invention. Claims 5, 7–11, 13, 14, 18, 20–24, 26, 29–31, 33 and 61–65 depend from these independent claims and, likewise, are indefinite. Appeal 2018-005021 Application 13/794,633 6 REJECTIONS 1–3 Having determined that claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 are indefinite based on the “different base material” limitation at issue in the prior art rejections (App. Br. passim), we cannot sustain the rejections 1–3 of these claims under 35 U.S.C. § 103(a) because to do so would require speculative assumptions as to the meaning and scope of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding that the Board erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a)). We emphasize that our reversal of the rejections is because the claims are indefinite; hence, a decision has not been made based on the merits of the prior art rejections of claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65. DECISION The Examiner’s rejections of claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 are pro forma REVERSED. Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds of rejection as follows: 1. Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the written description requirement. 2. Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite. 37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” 37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO Appeal 2018-005021 Application 13/794,633 7 MONTHS FROM THE DATE OF THE DECISION, must exercise one of the following two options with respect to the new grounds of rejection to avoid termination of the appeal as to the rejected claims: (1) Reopen prosecution. Submit an appropriate amendment of the claims so rejected or new evidence relating to the claims so rejected, or both, and have the matter reconsidered by the examiner, in which event the prosecution will be remanded to the examiner. . . . (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same record. . . . Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R. § 1.136(a)(1)(iv). REVERSED; 37 C.F.R. § 41.50(b)