Ex Parte Ahlfeld et alDownload PDFPatent Trial and Appeal BoardJan 30, 201712657734 (P.T.A.B. Jan. 30, 2017) Copy Citation 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 2 Appeal 2015-002599 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 3 Appeal 2015-002599 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 4 Appeal 2015-002599 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). 5 Appeal 2015-002599 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 6 Appeal 2015-002599 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, 7 Appeal 2015-002599 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). 8 Copy with citationCopy as parenthetical citation