GE-Hitachi Nuclear Energy Americas LLC

Patent Trials and Appeals BoardApr 15, 2021

2020005900 (P.T.A.B. Apr. 15, 2021)

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. 15/473,903 03/30/2017 Sean T. Mosier 5.0027.1 (24NS313009) 5646 15624 7590 04/15/2021 Ryan Alley IP (GE Docket) P.O. Box 87 Alexandria, VA 22313 EXAMINER COOK, KYLE A ART UNIT PAPER NUMBER 3726 NOTIFICATION DATE DELIVERY MODE 04/15/2021 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): office@alleylegal.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte SEAN T. MOSIER and BRET E. NELSON Appeal 2020-005900 Application 15/473,903 Technology Center 3700 Before DANIEL S. SONG, CARL M. DeFRANCO, and MICHAEL L. WOODS, Administrative Patent Judges. WOODS, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–20. See Appeal Br. 15. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE and enter a NEW GROUND OF REJECTION based on the authority provided to the Board under 37 C.F.R. § 41.50(b). 1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R. § 1.42(a). Appellant identifies the real party in interest as GE-Hitachi Nuclear Energy Americas LLC. Appeal Br. 1. Appeal 2020-005900 Application 15/473,903 2 CLAIMED SUBJECT MATTER The application is titled “Weld Repair Systems and Methods for Use in a Nuclear Reactor Jet Pump.” Spec. 1 (emphasis omitted). Claims 1 and 11 are independent. Appeal Br. 17–22 (Claims App.). We reproduce Claim 1, below, with emphasis added to a particular limitation that is central to our analysis: 1. A system for repairing a jet pump elbow having at least one of, a first weld connecting the elbow to a first conduit extending in a first direction from the elbow, and a second weld connecting the elbow to a second conduit extending in a second direction from the elbow, the system comprising: a single-piece base having a first leg shaped to secure in the first direction around the elbow at the first weld and a second leg shaped to secure in the second direction around the elbow at the second weld; and a drive plate shaped to secure around at least one of the first conduit at the first weld and the second conduit at the second weld, wherein the drive plate and the base are configured to bias against each other so as to compress the at least one of the first conduit and the second conduit into the elbow. Id. at 17 (Claims App.) (emphasis added). REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Deaver US 6,108,391 Aug. 22, 2000 Abura US 8,718,222 B2 May 6, 2014 Koepke US 2008/0107227 A1 May 8, 2008 Smith2 GB 400,079 Oct. 19, 1933 2 The Examiner refers to GB 400,079 as “GB ’079” in the Final Office Action and “Smith” in the Answer. Compare, e.g., Final Act. 5, with Ans. 15. For consistency in our Decision, we refer to GB 400,079 as “Smith.” Appeal 2020-005900 Application 15/473,903 3 REJECTIONS The following rejections are before us on appeal: (1) Claims 1–10 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Deaver, Abura, Smith, and Koepke. Final Act. 4. (2) Claims 11–20 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Deaver, Smith, and Koepke. Final Act. 10. OPINION I. Claims 1–10 as Unpatentable Over Deaver, Abura, Smith, and Koepke A. Examiner’s Rejection In rejecting independent claim 1, the Examiner finds that Deaver discloses the majority of the claimed limitations, referencing in-part Deaver’s Figures 1–4. Final Act. 5. We reproduce Deaver’s Figure 4, below: Appeal 2020-005900 Application 15/473,903 4 Figure 4 is a “perspective view of a portion of a jet pump assembly and a clamp assembly.” Deaver, 2:22–24. The Examiner finds that Deaver teaches a jet pump assembly comprising a “first conduit” (thermal sleeve 36), “elbow” 52, and “second conduit” (riser pipe 38). Final Act. 5 (citing Deaver, 2:38–47, Figs. 1, 2). The Examiner acknowledges, however, that Deaver does not teach a separate drive plate and base “configured to bias against each other so as to compress the at least one of the first conduit and the second conduit into the elbow.” See Final Act. 5. To address this shortcoming, the Examiner relies on Smith and Koepke. Id. at 5–6. Appeal 2020-005900 Application 15/473,903 5 In relying on Smith, the Examiner finds that Smith teaches flange members that are clamped together by bolts to relieve stress in a weld. Seeid. at 6 (citations omitted). We reproduce Smith’s Figure 3, below: Figure 3 “is a cross-section of a portion of a pipe joint in which the pipes are upset to provide shoulders for engagement by loose flange members and increased second of the parent metal adjacent the pipe ends.” Smith, 1:94– 99. Smith discloses that “flange members of which the primary object is to serve as a safety device in the event of fracture of the weld but they may be used also to relieve the weld of stresses by increasing the tension on the bolts in the flanges.” Id. at 1:63–68. In relying on Koepke, the Examiner cites in relevant part to Koepke’s Figure 2 (Final Act. 6), an annotated version we reproduce, below: Appeal 2020-005900 Application 15/473,903 6 Figure 2 is a perspective view of a weld repair device. See Koepke ¶¶ 1, 11. The Examiner finds that “[t]orqueing the bolts 7 draws the upper and lower clamp rings 1-4 towards each other and forces grippers 5 radially inward into pockets 12.” Final Act. 5 (citing Koepke Figs. 2, 5, ¶ 20). In modifying Deaver based on the teachings of Smith and Koepke, the Examiner reasons: [I]t would be obvious to split the members 54, 56, 112 & 114 of Deaver into two pieces such that each of the pieces is on an opposite side of the weld, and, a four piece clamp is provided at each weld interface. For example, while viewing fig. 4 of Deaver, it would be obvious to split each of members 54 & 56 into two Appeal 2020-005900 Application 15/473,903 7 portions along a vertical plane passing through the weld interface between the elbow and thermal sleeve 36 such that one portion is located on the elbow and the other portion is located on the thermal sleeve 36, and, to split each of members 112 & 114 along a horizontal plane passing through the weld interface of elbow and riser pipe 38 such that one portion is located on the elbow and the other portion is located on pipe 38. Since Deaver teaches each of the portions having a ridge 70, 72, 76, 78 that fits into a respective groove 64A, 64B, 66A, 66B, it would be predictable that clamping a portion on the elbow to a portion on the thermal sleeve via bolts will compress the thermal sleeve into the elbow and relieve stresses on the weld. Furthermore, it would be predictable to provide a four-piece weld support for a jet pump in this way as taught by Koepke. Final Act. 6.3 B. Analysis The primary issue is whether a skilled artisan would have modified Deaver’s system by “split[ting]” members 54, 56, 112, and 114 so that each piece of these members sits on opposite sides of a weld for the purpose of “reliev[ing] stresses on the weld[s],” as proposed by the Examiner in view of the teachings of Smith. Final Act. 6. Appellant argues that the proposed modification of making elements 54, 56, 112, and 114 “multi-piece, with a clamping action between them” complicates Deaver’s system “for no reason.” Appeal Br. 10. Appellant explains, “[T]here is no advantage or functionality to dividing solid elements to allow them to be pushed back into an original position like in Smith or 3 The Examiner also relies on Abura’s teachings and proposes to further modify Deaver based on these additional teachings. See Final Act. 7. This portion of the rejection is irrelevant to our analysis, however, and is not addressed beyond this footnote. Appeal 2020-005900 Application 15/473,903 8 Koepke, because solid elements already maintain the original position, by being solid.” Reply Br. 3. Appellant’s argument is persuasive. Smith and Deaver do not support the Examiner’s position. As to Smith, Smith addresses [S]o-called “seal-weld” joints for steam pipe flanges, the pipes are held together against an internal pressure by flanges and bolts and the outer edge of the joints between the two surfaces in contact is sealed by a run of weld metal, the weld being run while the flange bolts are pulled up hard and holding the joint surfaces in close contact. Smith, 1:13–21; see also id. at Figs. 3–5 (depicting bolts applying a compressive load at opposite ends of a welded joint and in the axial direction of the pipe conduits). Smith further describes that the bolts plastically deform—creep—over time when subject to a tensile load. See id. at 1:26– 34. As a result, the weld “is likely to fracture if the bolts are not tightened up from time to time so as to relieve the weld of all stress.” Id. at 1:35–40. In a nutshell, Smith teaches tightening flange bolts over time to compensate for the creep, or lengthening, of the bolts, so as to maintain the weld as originally formed. Smith does not teach that applying a compressive load on a weld itself strengthens the weld, or “relieves” the weld of stress, as the Examiner finds. See Final Act. 6 (“[Smith] teaches one of ordinary skill in the art that to reinforce and relieve stresses in the weld of two conduits, two flange members should be located on opposite sides of the weld and clamped together such that the flange members compress the conduits toward each other”); see also id. (“it would be predictable that clamping a portion on the elbow to a portion on the thermal sleeve via bolts will compress the thermal sleeve into the elbow and relieve stresses on the Appeal 2020-005900 Application 15/473,903 9 weld.”). Rather than relieving stresses, we agree with Appellant’s assessment that “compressing a weld itself could only increase stresses in the weld.” Reply Br. 2. Indeed, applying a compressive force on the weld will introduce compressive stresses on that same weld. Turning to Deaver, Deaver discloses clamps that “maintain[] the rigidity of the pipe structure.” Deaver, 2:7–8. Deaver accomplishes this with a clamp apparatus that spans the weld between the elbow and pipe conduits so as to maintain the welds as originally formed. See, e.g., id. at Figs. 2–4 (depicting clamping apparatus elements 54, 56, 112, 114 that each spans the welds between the pipe conduits and elbow). Compared to Smith’s flange bolts, Deaver’s clamp apparatus is robust, comprising of solid elements 54, 56, 112, 114 that span the welded joints so as to minimize any stresses that tend to separate the adjoining conduits and elbow, and consequently, any stresses on the welds themselves. Smith’s elements, on the other hand, are held together by bolts that apply a compressive force in the axial direction of the conduits and elbow. Compare id., with Smith, Figs. 3–5; see also Appeal Br. 9 (“elements 54 and 56 compress radially and not axially”). Because Deaver does not utilize bolts to apply a compressive force in the axial direction of the pipe conduits, Deaver’s clamping apparatus will not have bolts that will creep axially. As such, a skilled artisan would not have modified Deaver based on Smith’s teachings, which suggests re- torqueing bolts that undergo creep in the axial direction of a pipe conduit. The Examiner’s proposed modification to divide Deaver’s solid clamping elements (54, 56, 112, 114) and connect them with a bolt introduces a problem into the device of Deaver that is absent therefrom by splitting its Appeal 2020-005900 Application 15/473,903 10 members in accordance with Smith, to solve the problem in the manner taught by Smith. As such, the rejection is based on impermissible hindsight to meet the claimed limitations. For the foregoing reasons, we reverse the rejection of independent claim 1, and of its dependent claims 2–10—which inherit the same rejection infirmity—as unpatentable over Deaver, Abura, Smith, and Koepke. II. Claims 11–20 as Unpatentable Over Deaver, Smith, and Koepke Claim 11 is similar to claim 1 in that claim 11 recites, “biasing the first drive plate and the first leg of the base together in the first direction so as to compress . . . .” Appeal Br. 20 (Claims App.). In addressing this particular limitation, the Examiner relies on the same flawed analysis discussed above with respect to claim 1. See Final Act. 10 (“Deaver in view of [Smith] and Koepke as applied to the rejection of claims 1 and 7 teach this limitation”). For the same reasons we do not affirm the rejection of claim 1, we do not affirm the rejection of claim 11. Furthermore, claims 12–20 depend from claim 11 and inherit the same rejection infirmity. See Appeal Br. 20–22; see also Final Act. 11–13. As such, the Examiner’s rejection of claims 12–20 also fails. For the foregoing reasons, we reverse the rejection of independent claim 11, and of its dependent claims 12–20, as unpatentable over Deaver, Smith, and Koepke. Appeal 2020-005900 Application 15/473,903 11 III. New Ground of Rejection A claim is properly rejected as indefinite under 35 U.S.C. § 112, second paragraph, if, after applying the broadest reasonable interpretation in light of the specification, the metes and bounds of a claim are not clear because the claim “contains words or phrases whose meaning is unclear.” In re Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (per curiam) (approving, for pre-issuance claims, the standard from MPEP4 § 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach for assessing indefiniteness approved by the Federal Circuit in Packard). Independent claim 1 recites, in relevant part, “a single-piece base having a first leg.” Appeal Br. 17 (Claims App.) (emphasis added). Claim 7 depends from claim 1 and further recites, “a first clamp wing . . . wherein the first clamp wing and the base joined form the first leg.” Id. at 19. Since claim 1 already has a first leg, we do not see how the addition of a “first clamp wing” can subsequently “form the first leg,” as recited in dependent claim 7. Because the meaning of “form[ing] the first leg” is unclear, claim 7 is indefinite under 35 U.S.C. § 112, second paragraph. Packard, 751 F.3d at 1310, 1322. Furthermore, claim 8 depends from claim 7 and inherits the same lack of clarity. See Appeal Br. 20 (Claims App.). For this reason, claim 8 is also indefinite. 4 The Manual of Patent Examining Procedure (“MPEP”) (9th ed. Rev. 10.2019, rev. June 2020). Appeal 2020-005900 Application 15/473,903 12 CONCLUSION We reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C. § 103(a). We enter a new ground of rejection, however, of claims 7 and 8 as being indefinite under 35 U.S.C. § 112, second paragraph, pursuant to our authority under 37 C.F.R. § 41.50(b). DECISION SUMMARY In summary: Claim(s) Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed New Ground 1–10 103 Deaver, Abura, Smith, Koepke 1–10 11–20 103 Deaver, Smith, Koepke 11–20 7, 8 112(b) Indefiniteness 7, 8 Overall Outcome 1–6, 9–20 7, 8 FINALITY OF DECISION This decision contains a new ground of rejection based on the authority provided to the Board under 37 C.F.R. § 41.50(b). Section 41.50(b) provides “[a] new ground of rejection pursuant to this paragraph shall not be considered final for judicial review.” Section 41.50(b) also provides: When the Board enters such a non-final decision, the appellant, within two months from the date of the decision, must exercise one of the following two options with respect to the new ground of rejection to avoid termination of the appeal as to the rejected claims: Appeal 2020-005900 Application 15/473,903 13 (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. The new ground of rejection is binding upon the examiner unless an amendment or new Evidence not previously of Record is made which, in the opinion of the examiner, overcomes the new ground of rejection designated in the decision. Should the examiner reject the claims, appellant may again appeal to the Board pursuant to this subpart. (2) Request rehearing. Request that the proceeding be reheard under § 41.52 by the Board upon the same Record. The request for rehearing must address any new ground of rejection and state with particularity the points believed to have been misapprehended or overlooked in entering the new ground of rejection and also state all other grounds upon which rehearing is sought. Further guidance on responding to a new ground of rejection can be found in the Manual of Patent Examining Procedure § 1214.01. REVERSED; 37 C.F.R. § 41.50(b)