Eric P. Loewen et al.

Patent Trials and Appeals Board

Oct 28, 2019

14266302 - (D) (P.T.A.B. Oct. 28, 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.
14/266,302 04/30/2014 Eric P. Loewen 5.0032.1 (24NS274410) 1480
15624 7590 10/28/2019
Ryan Alley IP
(GE Docket)
P.O. Box 87
Alexandria, VA 22313
EXAMINER
MARKOFF, ALEXANDER
ART UNIT PAPER NUMBER
1711
NOTIFICATION DATE DELIVERY MODE
10/28/2019 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):
office@alleylegal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ERIC P. LOEWEN, BRETT J. DOOIES,
and NICHOLAS F. O’NEILL
____________

Appeal 2019-002339
Application 14/266,302
Technology Center 1700
____________

Before ROMULO H. DELMENDO, CHRISTOPHER C. KENNEDY, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–20.2 We have jurisdiction
over this appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant, GE-Hitachi Nuclear Energy Americas LLC, is
also identified as the real party in interest. Appeal Brief filed July 20, 2018
(“Appeal Br.”) at 1.
2 Final Office Action entered September 6, 2017 (“Final Act.”).
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CLAIMED SUBJECT MATTER
Appellant claims a system for reducing contaminant deposition on a
surface immersed in a fluid (independent claim 1), a mobile apparatus to
reduce contaminant depositions by inducing flows in a space flooded with a
liquid (independent claim 10), and a method of removing contaminant
depositions on open-system surfaces immersed in a water bearing
contaminants (independent claim 18).
Claims 1 and 10 illustrate the subject matter on appeal, and are
reproduced below:
1. A system for reducing contaminant deposition on a
surface immersed in a fluid, the system comprising:
a fluid source; and
an apparatus configured to discharge a fluid from the
fluid source against a surface while immersed in the fluid.

10. A mobile apparatus to reduce contaminant depositions by
inducing flows in a space flooded with a liquid, the mobile
apparatus comprising:
a flow intake receiving the liquid from the space; and
a multi-stage filter configured to filter particulate and
dissolved contaminants from the liquid; and
an outlet directing the liquid toward a surface so as to
create a flow of the liquid having speed of at least 2 meters per
second of the liquid contacting the surface.

Appeal Br. 23, 25 (Claims Appendix).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered November 27, 2018 (“Ans.”):
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I. Claims 1, 2, and 4 under 35 U.S.C. § 102(a)(1) as anticipated
by Enomoto;3
II. Claim 3 under 35 U.S.C. § 103 as unpatentable over Enomoto
in view of Kanehara;4
III. Claims 5 and 10–18 under 35 U.S.C. § 103 as unpatentable
over Enomoto in view of Rademan5 and Brings6;
IV. Claims 6 and 19 under 35 U.S.C. § 103 as unpatentable over
Enomoto in view of Rademan, Brings, and Rootham7;
V. Claims 7–9 under 35 U.S.C. § 103 as unpatentable over
Enomoto in view of Kanehara and Ecker;8 and
VI. Claim 20 under 35 U.S.C. § 103 as unpatentable over Enomoto
in view of Rademan, Brings, Rootham, Kanehara, and Ecker.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we reverse the Examiner’s rejections of
claims 3, 8, 9, 11–13, 17, and 20 under 35 U.S.C. § 103 for the reasons set
forth in the Appeal and Reply Briefs and below. We summarily sustain the
Examiner’s rejection of claims 1, 2, and 4 under 35 U.S.C. § 102(a)(1), and
rejections of claims 5, 6, 7, 10, 14–16, 18, and 19 under 35 U.S.C. § 103,
because Appellant does not contest these rejections. Appeal Br. 9–22; 37

3 Enomoto et al., US 5,553,106, issued September 3, 1996.
4 Kanehara et al., JPH0814534 (A), published June 4, 1996.
5 Rademan et al., US 2013/0022686 A1, published January 24, 2013.
6 Brings et al., US 2009/0101586 A1, published April 23, 2009 and
US 2009/0218289 A1, published September 3, 2009.
7 Rootham, US 5,764,717, issued June 9, 1998.
8 Ecker et al., US 2009/0151750 A1, published June 18, 2009.
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C.F.R. § 41.37(c)(1)(iv); see also Manual of Patent Examining Procedure
(MPEP) § 1205.02 (9th ed. Jan. 2018) (“If a ground of rejection stated by the
examiner is not addressed in the appellant’s brief, appellant has waived any
challenge to that ground of rejection and the Board may summarily sustain
it, unless the examiner subsequently withdrew the rejection in the
examiner’s answer.”).
Claims 3, 8, 9, and 20
We first address the Examiner’s rejection of claim 3 under 35 U.S.C.
§ 103 as unpatentable over Enomoto in view of Kanehara, rejection of
claims 8 and 9 under 35 U.S.C. § 103 as unpatentable over Enomoto in view
of Kanehara and Ecker, and rejection of claim 20 under 35 U.S.C. § 103 as
unpatentable over Enomoto in view of Rademan, Brings, Rootham,
Kanehara, and Ecker.
Claim 3 depends from claim 2, which depends from claim 1. When
read together with claims 1 and 2, claim 3 recites a system for reducing
contaminant deposition on a surface immersed in a fluid comprising an
apparatus configured to discharge a fluid from a fluid source against a
surface while immersed in the fluid, and claim 3 recites that the apparatus
includes a pump immersed in the fluid.
Claim 8 depends from claim 7, which depends from claim 1. When
read together with claims 1 and 7, claim 8 recites that the apparatus of claim
1 is mobile assembly including an induction pump connected to a fluid
source, and claim 8 recites that the mobile assembly is immersed in the fluid.
Claim 9 depends from claim 8, and, therefore, includes all the elements of
claim 8.
Claim 20 depends from claim 19, which depends from independent
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claim 18. When read together with claims 18 and 19, claim 20 recites a
method of removing contaminant depositions on surfaces immersed in water
comprising flowing water to meet the surface, and claim 20 recites that the
flowing is produced by a mobile assembly including an induction pump
completely submerged in the water.
Claims 3, 8, 9, and 20, therefore, each recite a system or method for
reducing or removing contaminant deposition on a surface immersed in a
fluid (or water), and require the system to comprise, or require the method to
involve use of, an apparatus (or mobile assembly) that includes a pump
configured to operate while immersed in a fluid (or water).
The Examiner finds that “Enomoto et al teaches an apparatus as
claimed except for the device where pump is submerged.9” Final Act. 4, 7.
The Examiner finds, however, that Kanehara “teaches that such devices
were known for cleaning of the submerged surfaces and teaches the benefits
of such.” Id.
As Appellant points out (Appeal Br. 11–12), however, the Examiner
does not identify any disclosure in Kanehara indicating that the apparatus
described in the reference includes a pump that is immersed in a fluid or
configured to operate when immersed in a fluid. Rather, Kanehara discloses
a robot used to remove marine organisms and sludge adhered to the inner
surface of pipes that supply seawater to thermal/nuclear power plants.
Kanehara ¶¶ 1, 2. Kanehara discloses that before Kanehara’s invention,
removal of marine organisms and sludge from the inner surface of such

9 Although the Examiner addresses this limitation in the rejection of claims 3
and 20 (Final Act. 4, 7), the Examiner does not address this limitation in the
rejection of claim 8 (Final Act. 6).
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pipes was “done manually by human beings entering the supply and drain
pipeline,” but, Kanehara explains, during such cleaning operations, the pipes
would fill with “offensive odors emitted from marine organisms” detached
from the pipes, creating a poor working environment for humans. Kanehara
¶ 3. Kanehara discloses that its invention replaces manual pipe cleaning
with a robot that uses the impact force of a high pressure water jet ejected
from a cleaning nozzle to remove marine organisms and sludge from the
inner surface of pipe walls. Kanehara ¶¶ 9, 11, 12; Fig. 1.
Although the Examiner asserts that the robot disclosed in Kanehara
“is for cleaning for water pipes, such a[s] seawater flow pipe, which . . .
obviously contains water,” and further asserts that the “robot is immersed in
the water and obviously comprises a pump to create the high pressure jet for
cleaning” (Ans. 9), the Examiner does not identify any actual disclosure in
Kanehara that indicates or would have suggested that the robot described in
the reference is immersed in water or is configured to operate while
immersed in water. Nor does the Examiner identify any disclosure in
Kanehara that indicates or would have suggested that the robot includes a
pump that is also configured to be immersed in water. In re Giannelli, 739
F.3d 1375, 1379–80 (Fed. Cir. 2014). The Examiner’s assertions to the
contrary, therefore, amount to mere speculation due to the absence of any
supporting evidence or reasoning based on, for example, well-established
common knowledge. In re Warner, 379 F.2d 1011, 1017 (CCPA 1967)
(“The Patent Office . . . may not . . . resort to speculation, unfounded
assumptions or hindsight reconstruction to supply deficiencies in its factual
basis.”); see also In re Sporck, 301 F.2d 686, 690 (CCPA 1962).
Consequently, on the record before us, the Examiner does not provide
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a sufficient factual basis to establish that Kanehara discloses, or would have
suggested, an apparatus (or mobile assembly) that includes a pump that is
configured to operate while immersed in a fluid (or water), as required by
claims 3, 8, 9, and 20.
We, accordingly, do not sustain the Examiner’s rejection of these
claims under 35 U.S.C. § 103.
Claims 11 to 13
We next turn to the Examiner’s rejection of claims 11–13 under
35 U.S.C. § 103 as unpatentable over Enomoto in view of Rademan and
Brings.
Claim 11 depends from independent claim 10 (reproduced above) and
recites that the mobile apparatus of claim 10 further comprises “a pump
connected to the flow intake, wherein the pump is configured to create the
flow while the mobile apparatus is completely immersed in the liquid in the
space.” Because claim 12 depends from claim 11, and claim 13 depends
from claim 12, claims 12 and 13 include all the elements of claim 11.
As Appellant points out (Appeal Br. 17–18), the Examiner’s rejection
of claims 5 and 10–18 set forth in the Final Action does not address claim 11
specifically. Final Act. 4–5. As Appellant also points out, the Examiner
indicates on the second page of an Advisory Action entered January 16,
2018 that claim 11 “does not require the pump be immersed in the liquid. It
merely recites a pump connected to the flow intake. However, if the claim
will be amended to require such, it will be rejected using the teaching of JP
8-141534 [Kanehara].”
Appellant argues that claim 11 requires the mobile apparatus
including the pump to be configured to be completely immersed in fluid, and
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none of the prior art references applied in the rejection of claim 11 disclose
this feature. Appeal Br. 18–19. In response to Appellant’s arguments, the
Examiner indicates in the Answer that claim 11 “merely require[s] a pump
connected to a flow intake,” which Enomoto discloses. Ans. 10.
Claim 11, however, requires the mobile apparatus of claim 10 to
comprise a pump, and recites that “the pump is configured to create the flow
while the mobile apparatus is completely immersed in the liquid in the
space.” Appellant’s Specification explains that mobile assembly 300 of
Appellant’s invention is immersed in coolant contained within refueling
cavity 20, and indicates that mobile assembly 300 includes pump 344 that
pressurizes and accelerates coolant from coolant supply 354 and from cavity
20 into an induced flow 352 against cavity wall 21. Spec ¶¶ 25, 31, 32, 36;
Fig. 3. In view of this disclosure in the Specification, claim 11 requires the
recited pump to be designed or constructed to create a flow while immersed
in liquid. Giannelli, 739 F.3d at 1379 (Recitation in a claim that an
apparatus or structure is “configured to” perform a particular function
requires more than “mere capability” of performing the recited function, and
is synonymous with “made to” or “designed to” perform the function, when
the description makes clear that the claimed apparatus or structure is
“designed to” or “constructed to” perform the recited function.).
Enomoto discloses an apparatus including reactor pressure vessel 9
containing reactor water 11, suction pump 31, and high pressure pump 15.
Enomoto col. 7, ll. 25–31; col. 10, ll. 35–45; Fig. 8. Enomoto discloses that
suction pump 31 and high pressure pump 15 are both not submerged in
reactor water 11. Enomoto Fig. 8. The Examiner does not identify and
disclosure in Enomoto that indicates or would have suggested that either
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suction pump 31 or high pressure pump 15 is designed or constructed to
create a flow while immersed in liquid, as required by claim 11.
Furthermore, to the extent that the Examiner may rely on Kanehara
for disclosure of such as pump, as discussed above, the Examiner does not
identify any disclosure in Kanehara that indicates or would have suggested
that the robot described in the reference includes a pump that is immersed in
water, and, thus, is designed or constructed to create a flow while immersed
in liquid, as required by claim 11.
On the record before us, the Examiner, therefore, does not provide a
sufficient factual basis to establish that either Enomoto or Kanehara
discloses, or would have suggested, a pump designed or constructed to
create a flow while immersed in liquid, as required by claim 11. We,
accordingly, do not sustain the Examiner’s rejection of claims 11–13 under
35 U.S.C. § 103.
Claim 17
We next address the Examiner’s rejection of claim 17 under 35 U.S.C.
§ 103 as unpatentable over Enomoto in view of Rademan and Brings
Claim 17 depends from independent claim 10. As set forth above,
claim 10 recites a mobile apparatus to reduce contaminant depositions by
inducing flows in a space flooded with a liquid comprising, in part, a flow
intake receiving the liquid from the space, and an outlet directing the liquid
toward a surface so as to create a flow of the liquid. Claim 17 recites that
the flow moves the mobile apparatus within the space.
The Examiner determines that the recitation in claim 17 that “the flow
moves the mobile apparatus” “is a mere recitation of the intended use of the
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apparatus.” Ans. 10.10 The Examiner finds that Enomoto teaches a
“movable mobile assembly, which moves in vertical and radial direction and
use[s] a high pressure water flow, thus it is capable of the recited intended
use.” Final Act. 11 (citing Enomoto col. 7, ll. 34–57; col. 7, l. 65–col. 8, l.
24).
Contrary to the Examiner’s assertion, however, the recitation in claim
17 that “the flow moves the mobile apparatus” is not an intended use of the
claimed apparatus. Although claim 10 does not explicitly recite that the
outlet is “configured to” direct liquid toward a surface so as to create a flow
of the liquid that “moves the mobile apparatus” as recited in claim 17, such a
configuration is implied by the plain language of claims 10 and 17. As
discussed above, Appellant’s Specification explains that mobile assembly
300 of Appellant’s invention includes pump 344 that pressurizes and
accelerates coolant from coolant supply 354 and from cavity 20 into an
induced flow 352 against cavity wall 21. Spec ¶¶ 25, 31, 32, 36; Fig. 3. The
Specification indicates that sufficient force may be generated by coolant
flow 352 to move mobile assembly 300. Spec. ¶¶ 36, 37.
In view of this disclosure in the Specification, claim 17, when read
together with claim 10, requires the claimed mobile apparatus to include an
outlet designed or constructed to direct liquid toward a surface so as to
create a flow of the liquid that moves the mobile apparatus. Giannelli, 739
F.3d at 1379. As Appellant argues (Reply Br. 5–6), Enomoto does not
disclose such a mobile apparatus.
More specifically, as discussed above, Enomoto discloses an

10 The Examiner does not specifically address claim 17 in the rejection of
claims 5 and 10–18 in the Final Action. Final Act. 4–5.
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apparatus comprising reactor 21 including reactor pressure vessel 9
containing reactor water 11. Enomoto col. 7, ll. 25–31; Fig. 8. Enomoto
discloses that nozzle 14 is immersed in reactor water 11 and is connected
through conductor 17 to water tank 12 and high pressure pump 15, which are
outside reactor 21, and Enomoto explains that nozzle 14 ejects cold water jet
8 against the surface of core shroud 13. Enomoto col. 7, ll. 28–31; col. 8, ll.
20–21, 31–33; Fig. 8. Enomoto discloses that the apparatus includes a
driving mechanism comprising a circumferentially movable carriage
provided at the top of pressure vessel 9, a radially movable carriage provided
on an upper surface of the circumferentially movable carriage, and a mast
suspended from the radially movable carriage that telescopically extends and
contracts in the vertical direction. Enomoto col. 7, ll. 37–45. Enomoto
discloses that nozzle 14 is attached to a lowest end of the mast. Enomoto
col. 7, ll. 46–47. Enomoto discloses that conductor 17 has a structure similar
to the mast that telescopically extends and contracts in the vertical direction
or in the radial direction. Enomoto col. 7, ll. 48–51. Enomoto discloses that
“[w]ith such arrangements of the driving mechanism and the conductor 17,
the nozzle 14 can be radially and vertically moved in the pressure vessel 9.”
Enomoto col. 7, ll. 52–54.
As Appellant points out (Reply Br. 5–6), although Enomoto discloses
that driving mechanism and conductor 17 move nozzle 14 radially and
vertically, the Examiner does not identify any disclosure in Enomoto that
indicates or would have suggested that nozzle 14 directs liquid toward a
surface to create a flow of the liquid that moves nozzle 14. Consequently, on
the record before us, the Examiner does not provide a sufficient factual basis
to establish that Enomoto discloses, or would have suggested, a mobile
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apparatus including an outlet designed or constructed to direct liquid toward
a surface so as to create a flow of the liquid that moves the mobile apparatus,
as required by claim 17. We, accordingly, do not sustain the Examiner’s
rejection of this claim under 35 U.S.C. § 103.

CONCLUSION

Claims

35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1, 2, 4 102(a)(1) Enomoto 1, 2, 4
3 103 Enomoto,
Kanehara
3
5, 10–18 103 Enomoto,
Rademan,
Brings
5, 10,
14–16,
18
11–13, 17
6, 19 103 Enomoto,
Rademan,
Brings,
Rootham
6, 19
7–9 103 Enomoto,
Kanehara, Ecker
7 8, 9
20 103 Enomoto,
Rademan,
Brings,
Rootham,
Kanehara, Ecker
20
Overall
Outcome
1, 2, 4–7,
10, 14–
16, 18,
19
3, 8, 9, 11–13,
17, 20
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)(iv).

AFFIRMED IN PART