Ex Parte Ahlfeld et al

Patent Trial and Appeal Board

Jan 30, 2017

12657734 (P.T.A.B. Jan. 30, 2017)

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.
12/657,734 01/25/2010 Charles E. Ahlfeld 365033CIP/0108-032-001-C0 7193
136716 7590 02/01/2017
HolzerlPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
EXAMINER
MCGUE, FRANK J
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
02/01/2017 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):
docket @ holzerlPlaw. com
docketing @ terrapo wer. com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES E. AHLFELD, EHUD GREENSPAN,
RODERICK A. HYDE, NATHAN P. MYHRVOLD,
JOSHUA C. WALTER, KEVAN D. WEAVER,
THOMAS ALLAN WEAVER, LOWELL L. WOOD JR.,
and GEORGE B. ZIMMERMAN
Appeal 2015-002599
Application 12/657,734
Technology Center 3600
Before STEFAN STAICOVICI, WILLIAM A. CAPP, and
FREDERICK C. LANEY, Administrative Patent Judges.
CAPP, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 274—295 as unpatentable under 35 U.S.C. § 103(a) over
Impink (US 4,716,006, iss. Dec. 29, 1987), Davidson (US 4,609,522, iss.
Sept. 2, 1986), and Robbins (US 3,219,535, iss. Nov. 23, 1965). We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
Appeal 2015-002599
Application 12/657,734
THE INVENTION
Appellants’ invention relates to controlling reactivity in a nuclear
fission reactor. Spec. 1. Claim 274, reproduced below, is illustrative of the
subject matter on appeal.
274. A method comprising:
determining at least one reactivity parameter of a
controllably movable rod in a nuclear fission reactor, the
controllably movable rod including fertile nuclear fission fuel
material; and
determining an application of the controllably movable rod
chosen from a reactivity control rod and a nuclear fission fuel
rod.
OPINION
Appellants argue claims 274—295 as a group. Appeal Br. 13 44. We
select claim 274 as representative. See 37 C.F.R. § 41.37(c)(l)(iv) (2016).
The Examiner finds that both Impink and Davidson disclose a method
including determining at least one reactivity parameter of a controllably
movable rod in a nuclear fission reactor. Final Action 3. The Examiner
concedes that neither Impink nor Davidson show the use of fertile nuclear
fission fuel material in movable rods within nuclear reactor systems, but
then relies on Robbins as disclosing this feature. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to provide fertile nuclear fission fuel in the
movable rods of the methods of Impink and Davidson. Id. According to the
Examiner, a person of ordinary skill in the art would have done this to
produce power at low cost while utilizing nuclear fuel resources. Id.
The Examiner further finds that Impink shows determining an
application of the controllably movable rod chosen from a reactivity control
rod. Id. (citing Impink col. 8:37—68 and col. 9:1—55). Similarly, the
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Application 12/657,734
Examiner finds that Davidson shows determining an application of a
controllably movable rod chosen from a nuclear fission fuel rod. Id. at 4.
(citing Davidson, col. 6:50-55). The Examiner concludes that it would have
been obvious to a person of ordinary skill in the art at the time the invention
was made to modify Impink by using the movable nuclear fission fuel rods
of Davidson. Id. According to the Examiner, a person of ordinary skill in
the art would have done this to provide alternative methods of controlling a
nuclear reactor. Id.
Appellants traverse the Examiner’s rejection by first arguing that
Impink and Davidson, alone or in combination, fail to disclose the step of
“determining an application of the controllably movable rod chosen from a
reactivity control rod and a nuclear fission fuel rod.” Appeal Br. 28.
Appellants direct our attention to pages 40-41 of their Specification as an
example for what it means for an application of the claimed rod to be chosen
from a reactivity control rod and nuclear fission fuel rod. Id.
In response, the Examiner concedes that neither Impink nor Davidson,
alone, teach “determining . . . chosen from a reactivity control rod and a
nuclear fission fuel rod.” Ans. 7—8 (emphasis added). According to the
Examiner, however,
it is the combination of Impink and Davidson which meet
this claim language. Impink determines the application of the
controllably movable rod chosen from different types of rods
(gray rods, displacer rods, control rods). While Impink does
not apply a nuclear fission fuel rod to control reactivity,
Davidson does so determine an application of a controllably
movable rod being a nuclear fission fuel rod.
Ans. 7—8. Thus, according to the Examiner, it would have been obvious to a
person of ordinary skill in the art “to modify Impink by substituting a
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Application 12/657,734
nuclear fission fuel rod as Davidson suggests as Impink already suggests
choosing between differing rods and Davidson simply provides an
alternative for another type of rod to be used as needed.” Id. at 8.
Next, Appellants argue that Impink fails to disclose “determining an
application of the controllably movable rod” as claimed. Appeal Br. 34,
Reply Br. 5. Appellants support this contention by stating that the assembly
of Impink “is always ... a reactivity control rod.” Reply Br. 6. According
to Appellants:
Impink does not contemplate "determining an application of the
controllably movable rod chosen from a reactivity control rod
and a nuclear fission fuel rod" of Claim 274 because the
"particular assembly" of Impink cannot display multiple
functions, which is in contrast to "the controllably movable
rod" of Claim 274, which may serve as a "reactivity control
rod" or a "nuclear fission fuel rod."
Reply Br. 6—7. However, this is merely another way of re-wording
Appellants’ first argument regarding choosing from a reactivity control rod
and a nuclear fission fuel rod.
Impink is directed to a method of operating a pressurized water
nuclear reactor. Impink, Abstract. Impink discloses the use of control
rods 80 (col. 9,11. 12 & 68), gray rods 82 (col. 9,1. 53), and displacer
rods 40 (col. 9,11. 54—55). Impink further explains that “proper selection
and movement of the rods can accomplish delicate reactor control.” Id. at
col. 9,11. 56—57. Thus, the Examiner’s finding that Impink teaches an
application of a controllably movable rod chosen from a reactivity control
rod is supported by a preponderance of the evidence.
Appellants’ argument that Impink does not disclose “determining an
application of the controllably movable rod chosen from a reactivity control
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Application 12/657,734
rod” is not persuasive. Appellants, in essence, argue that the claim language
directed to a “reactivity control rod” is not met, because Impink does not
also disclose the claim language directed to “a nuclear fission fuel rod.”
However, the Examiner relies on Davidson, not Impink, for disclosure of a
nuclear fission fuel rod. Ans. 8. Thus, Appellants’ argument amounts to an
individual attack on one reference, where the rejection is based on a
combination of references. This is not persuasive as it well settled that non­
obviousness cannot be established by attacking references individually
where the rejection is based upon the teachings of a combination of
references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re
Keller, 642 F.2d413, 425 (CCPA 1981).
Next, Appellants challenge the sufficiency of the Examiner’s rationale
for combining the two references. Appeal Br. 42-44.
Appellants assert that the mere allegation that the statement "in
order to provide alternate methods of controlling a nuclear
reactor" does not constitute objective evidence sufficient to
prove that "[i]t would have been obvious to modify Impink by
using the movable nuclear fission fuel rods of Davidson," as
such a statement does not constitute a "reason" for combining
the respective references.
Appeal Br. 42. We disagree.
As persons of scientific competence in the fields in which they
work, examiners . . . are responsible for making findings,
informed by their scientific knowledge, as to the meaning of
prior art references to persons of ordinary skill in the art and the
motivation those references would provide to such persons.
Absent legal error or contrary factual evidence, those findings
can establish a prima facie case of obviousness.
In re Berg, 320 F.3d 1310, 1315 (Fed. Cir. 2003) (emphasis added).
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Application 12/657,734
In KSRInt’l Co. v. Teleflex Inc., 550 U.S. 398 (2007), the Supreme
Court explained that:
Under the correct analysis, any need or problem known in the
field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the
manner claimed.
Id. at 420. A reason to modify a prior art reference may be found explicitly
or implicitly in market forces; design incentives; the “interrelated teachings
of multiple patents”; “any need or problem known in the field of endeavor at
the time of invention and addressed by the patent”; and the background
knowledge, creativity, and common sense of the person of ordinary skill.
Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1328—29 (Fed. Cir.
2009) (quoting KSR, 550 U.S. at 418—21)). An implicit motivation to
combine exists when the improvement is technology-independent and the
combination of references results in a product or process that is more
desirable, for example because it is stronger, cheaper, cleaner, faster, lighter,
smaller, more durable, or more efficient. Dystar Textilfarben GmBH & Co,
v. C.H. Patrick Co., 464 F.3d 1356, 1368 (Fed. Cir. 2006).
Because the desire to enhance commercial opportunities by
improving a product or process is universal—and even
common-sensical—we have held that there exists in these
situations a motivation to combine prior art references even
absent any hint of suggestion in the references themselves.
Id.
In the instant case, the Examiner finds that Impink determines the
application of controllable movable rods chosen from different types of rods
including gray rods, displacer rods, and control rods. Ans. 8. Appellants
present neither evidence nor persuasive technical reasoning to rebut this
finding. Essentially, the Examiner reasons that, since Impink already
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Application 12/657,734
determines and choses among movable rods, merely adding one more type
of movable rod to the determination and choosing process provides a useful
alternative. Id. It is implicit in the Examiner’s statement that providing such
an alternative is “desirable.” Dystar, 464 F.3d at 1368. This reasoning is
both persuasive and adequate to support the Examiner’s rejection.
Appellants, once again, provide neither evidence nor persuasive technical
reasoning that would tend to show that making the Examiner’s combination
would require anything more than the exercise of ordinary skill.
We have considered Appellants’ remaining arguments and find them
to be without merit. Thus, in view of the foregoing discussion, we
determine the Examiner's findings of fact are supported by a preponderance
of the evidence and that the Examiner’s legal conclusion of unpatentability
is well-founded. Accordingly, we sustain the Examiner's unpatentability
rejection of claims 274—295.
Reply Brief Arguments Directed to
the Patentability of Claims 281, 282, 286, and 287
In their opening Appeal Brief, Appellants elected not to argue for the
separate patentability of claims 275—295. Appeal Br. 44.
Appellants respectfully submit that the rejection of dependent
claims 275-295 be reversed for the same reasoning as applied to
the rejection of independent Claim 274 above. "A claim in
dependent form shall be construed to incorporate by reference
all the limitations of the claim to which it refers." See 35 U.S.C.
§ 112, paragraph 4. Consequently, Dependent Claims 275-295
are patentable for at least the reasons why Independent Claim
274 is patentable.
Id.
In their Reply Brief, Appellants raise, for the first time, new
arguments directed toward the patentability of claims 281, 282, 286,
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Application 12/657,734
and 287. Reply Br. 8—13.1 These arguments are presented under separate
sub-headings for claims 281 and 282 and for claims 286 and 287
respectively. Id. Our governing rules provide, in pertinent part, as follows
Any argument raised in the reply brief which was not raised in
the appeal brief, or is not responsive to an argument raised in
the examiner's answer, including any designated new ground of
rejection, will not be considered by the Board for purposes of
the present appeal, unless good cause is shown.
37 C.F.R. § 41.41 ((b)(2). Appellants make no attempt to show good cause
for the untimely advancement of these new arguments and, consequently,
they will not be considered. Id.
DECISION
The decision of the Examiner to reject claims 274—295 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)(l)(iv).
AFFIRMED
1 In their opening brief, Appellants also stated “Additionally, dependent
claims 275—295 are patentable on their own merit due to distinct subject
matter.” Appeal Br. 44. However, it is well settled that this kind of naked
assertion does not amount to a separate argument for patentability. See 37
C.F.R. § 41.37(c)(iv) (“A statement which merely points out what a claim
recites will not be considered an argument for separate patentability of the
claim”). In re Lovin, 652 F.3d 1349, 1357 (Fed. Cir. 2011) (Rule 41.37
requires more than recitation of the claim elements and a naked assertion
that the elements are not found in the prior art).
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