Bruce F. Allen et al.

Patent Trials and Appeals Board

Aug 1, 2019

13406876 - (D) (P.T.A.B. Aug. 1, 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.
13/406,876 02/28/2012 Bruce F. Allen NSD2009-016 1430
26353 7590 08/01/2019
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
EXAMINER
GARNER, LILY CRABTREE
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/01/2019 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):
coldrerj@westinghouse.com
guerral@westinghouse.com
spadacjc@westinghouse.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
__________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
__________

Ex parte BRUCE F. ALLEN and GREGORY E. FALVO1
__________

Appeal 2019-000392
Application 13/406,876
Technology Center 3600
__________

Before MICHAEL L. HOELTER, LEE L. STEPINA, and
ARTHUR M. PESLAK, Administrative Patent Judges.

HOELTER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
This is an Appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1–4 and 8. App. Br. 1. Claims 5–7 have been canceled
and claims 9–12 have been withdrawn from consideration. Final Act. 2. We
have jurisdiction under 35 U.S.C. § 6(b). For the reasons explained below,
we affirm the Examiner’s rejections of claims 1–4 and 8 as being obvious
under 35 U.S.C. § 103(a).

1 “The real party in interest is Westinghouse Electric Company LLC.” App.
Br. 2. We refer to the appealing party as “Appellant.”
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CLAIMED SUBJECT MATTER
The disclosed subject matter “relates to a control rod drive mechanism
(‘CRDM’) assembly for a nuclear reactor, such as, but not limited to, a
pressurized water reactor.” Spec. ¶ 1. Claim 1 is the sole independent
claim, is illustrative of the claims on appeal, and is reproduced below.
1. A control rod drive mechanism assembly for a nuclear
reactor having a reactor vessel, a reactor core, and a reactor
vessel head, the control rod drive mechanism assembly
comprising:
a rod travel housing having a lower end and an upper
end;
an integrated component installed into the reactor vessel
head, comprising:
a latch housing nozzle having a first end and a
second end, the first end of the latch housing nozzle attached to
the reactor vessel head; and
a latch housing having a first end and a second
end, the first end of the latch housing integrated with the second
end of the latch housing nozzle by an integration mechanism
selected from the group consisting of a bimetallic weld and
fabrication to form a single component,
wherein integration of the second end of the latch
housing nozzle and the first end of the latch housing is absent
of a canopy seal weld and a threaded connection;
a latch assembly positioned within the latch housing,
wherein the latch assembly is attached to the lower end
of the rod travel housing, such that the latch assembly is
installed and removed with the rod travel housing;
a threaded connection, the lower end of the rod travel
housing being threaded into the second end of the latch
housing; and
a maintenance joint, comprising a canopy seal weld, the
lower end of the rod travel housing being seal welded to the
second end of the latch housing; and
an end cap connected to the upper end of the rod travel
housing absent a canopy seal weld.
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Application 13/406,876

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REFERENCES
Klarner et al. US 2005/0084056 A1 April 21, 2005
Kiyoshi Takanabe et al., Development of advanced CRDM without
canopy seal welds, 214 NUCLEAR ENG’G & DESIGN 25–34 (2002)
(“Takanabe”).
Appellant’s Admitted Prior Art (hereinafter “AAPA”) consisting of
Figures 1, 1A, 1B, and 1C, in addition to the associated description of these
figures in the Specification.
THE REJECTIONS ON APPEAL2
Claims 1–3 and 8 are rejected under pre-AIA 35 U.S.C. § 103(a) as
unpatentable over AAPA and Takanabe.
Claim 4 is rejected under pre-AIA 35 U.S.C. § 103(a) as unpatentable
over AAPA, Takanabe, and Klarner.
ANALYSIS
The rejection of claims 1–3 and 8
as unpatentable over AAPA and Takanabe
Appellant argues claims 1–3 and 8 together. See App. Br. 4–6. We
select independent claim 1 for review, with dependent claims 2, 3, and 8
standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
The Examiner primarily relies on AAPA for disclosing the limitations
of claim 1, but acknowledges, “[t]he difference between AAPA and
Applicant’s invention is that AAPA has a canopy weld at 13 (Figure 1A) and
a canopy weld at 17 (Figure 1C).” Final Act. 5. The Examiner finds that the
missing teachings “are well-known in the art, as evidenced by Takanabe.”

2 “The 35 USC [§] 112 antecedent basis rejection in the Final Rejection . . .
was fixed . . . and was thus withdrawn.” Ans. 3.
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Final Act. 6. The Examiner, thereafter, identifies where Takanabe renders
these teachings well known and also why it would have been obvious to
modify AAPA in view of Takanabe, thereby rendering claim 1 obvious. See
Final Act. 6, 7 (citations to Takanabe omitted).
Appellant initially addresses only AAPA contending, “[t]he AAPA
clearly does not teach or suggest the claimed invention.” App. Br. 4. This
argument is not persuasive because it does not take into account the further
teachings of Takanabe, or the combination of these teachings with AAPA.
Appellant also addresses “the combination of Takanabe with the
AAPA.” App. Br. 5; see also Reply Br. 2. Appellant distinguishes the
application of Takanabe with AAPA because Takanabe “eliminates all
canopy seal welds,” “[w]hereas, the originally filed [S]pecification for the
instant invention describes eliminating two of the three canopy seal welds.”
App. Br. 5–6. In other words, “one having ordinary skill in the art would be
motivated to modify the AAPA design to eliminate the top, middle and
bottom canopy seal welds based on the Takanabe design.” App. Br. 5; see
also Reply Br. 3. Stated another way, “[o]ne having ordinary skill in the art
would not be motivated to modify the AAPA design by selectively
eliminating the top and bottom canopy seal welds based on the Takanabe
design, and retaining the middle canopy seal weld contrary to the Takanabe
design.” App. Br. 5.
The Examiner responds by identifying where Takanabe states that
“elimination of the middle . . . canopy seal welds was the most difficult
issue.” Ans. 3 (emphasis omitted) (referencing Takanabe “page 30, section
4.4”). The Examiner acknowledges that “canopy seal welds have known
leaking problems” but also that “despite their problems, reactors have been
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operating and producing electricity successfully with canopy seal welds
since the 1970s.” Ans. 4. Thus, the Examiner concludes that “the skilled
artisan would have been motivated to eliminate the top and bottom canopy
seal welds for the reasons cited in the Final Action, but would refrain from
replacing the middle canopy seal weld because it was ‘the most difficult’
one to eliminate.” Ans. 4. The Examiner justifies this stating, “replacing the
middle weld is costly in terms of both time and money” and also references
Takanabe Table 2 which identifies various additional considerations that
must be taken into account when replacing this middle weld.3 Ans. 4. The
Examiner also explains that “facilities are motivated to perform repairs in
the most cost-effective manner. The ordinary skilled artisan is well-aware
that sometimes this manifests as not fixing auxiliary issues deemed
particularly difficult.” Ans. 5. Thus, the Examiner reasons, “[t]aking all
these items under consideration [i.e., eliminating the middle canopy seal
weld] requires a large amount of time relative to the fewer considerations
listed for replacing the top and bottom welds.”4 Ans. 4.
Appellant replies stating, “[n]uclear power facilities have regularly
scheduled shutdowns” and that “[e]limination of the middle canopy seal
weld could be performed during a regularly scheduled shutdown.” Reply
Br. 3. Appellant continues stating, “[i]n considering the combination of
AAPA and Takanabe, a skilled artisan would be motivated to modify all of

3 “Takanabe details that, in their effort to replace the middle weld, they had
to construct ‘an advanced fabrication method’ requiring creating ‘a new
welding apparatus’ and ‘a new welding method’ as well as ‘a new
monitoring system.’ See page 33, Section 4.4.2.” Ans. 4.
4 The Examiner explains, “the more time a nuclear power facility is shut
down for repairs, the more money the company loses.” Ans. 5.
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the lower, middle and upper joints” because Takanabe discloses that canopy
seal welds leak. Reply Br. 2 (referencing Takanabe § 4.4 (“[T]hus the
elimination of the threaded joints with canopy seals welds was determined to
eliminate a potential for leakage of primary coolant.”)). This replacement of
all the welds would occur, according to Appellant, in order to derive “the
benefit of eliminating leakage of radioactive primary coolant therefrom.”
Reply Br. 3. Appellant contends that “allowing continued leakage of
primary coolant from the middle canopy seal weld may have more potential
to cause an unscheduled outage if an emergency repair would be needed due
to stress corrosion cracking issues associated with the leakage.” Reply Br. 4.
Both sides of the issue before us have merit, however, we believe the
Examiner has the better of the two. This is because “a given course of
action often has simultaneous advantages and disadvantages, and this does
not necessarily obviate motivation to combine.” Medichem, S.A. v. Rolabo,
S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006). Further, our reviewing court has
provided guidance stating, “[t]he fact that the motivating benefit comes at
the expense of another benefit, however, should not nullify its use as a basis
to modify the disclosure of one reference with the teachings of another.
Instead, the benefits, both lost and gained, should be weighed against one
another.” Winner Int’l Royalty Corp. v. Wang, 202 F.3d 1340, 1349 n.8
(Fed. Cir. 2000).
In addition to the above, it appears that in addressing the teachings of
Takanabe, Appellant is arguing that the entire teachings of Takanabe relating
to all the welds should be bodily incorporated into AAPA, when the
Examiner is only addressing the top and bottom welds. In other words, it is
well settled that obviousness does not require that all of the features of the
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secondary reference be bodily incorporated into the primary reference,
instead, “the test is what the combined teachings of the references would
have suggested to those of ordinary skill in the art.” In re Keller, 642 F.2d
413, 425 (CCPA 1981).
Accordingly, and based on the record presented, we are not persuaded
the Examiner erred in rejecting claims 1–3 and 8 as being obvious over
AAPA and Takanabe.
The rejection of claim 4
as unpatentable over AAPA, Takanabe, and Klarner
Appellant does not present a separate argument regarding the
additional limitations of claim 4. Instead, Appellant states that claim 4
depends from claim 1, and as such, claim 4 “distinguishes over the
combination of AAPA and Takanabe at least for reason of its dependency.”
App. Br. 6. We are not persuaded by Appellant’s statement. We, likewise,
sustain the Examiner’s rejection of claim 4 as being obvious over AAPA,
Takanabe, and Klarner.
DECISION
The Examiner’s rejections of claims 1–4 and 8 as being obvious is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED