Ex Parte Ahlfeld et al

Patent Trial and Appeal Board

Sep 9, 2016

12930259 (P.T.A.B. Sep. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/930,259 12/30/2010
123334 7590 09/13/2016
TerraPower, LLC
330 120th Ave. NE, Suite 100
Bellevue, WA 98005
FIRST NAMED INVENTOR
Charles E. Ahlfeld
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
0707-032-025-C00002 5979
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
09/13/2016 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):
docketing@terrapower.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte CHARLES E. AHLFELD, THOMAS M. BURKE,
TYLER S. ELLIS, JOHN ROGERS GILLELAND, JONATAN HEJZLAR,
PAVEL HEJZLAR, RODERICK A. HYDE, DAVID G. MCALEES,
JON D. MCWHIRTER, ASHOK ODEDRA, ROBERT C. PETROSKI,
NICHOLAS W. TOURAN, JOSHUA C. WALTER, KEV AND. WEA VER,
THOMAS ALLAN WEA VER, CHARLES WHITMER,
LOWELL L. WOOD JR., and GEORGE B. ZIMMERMAN
Appeal2014-009272
Application 12/930,259
Technology Center 3600
Before JAMES P. CAL VE, 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 claim 124 under 35 U.S.C. § 112, 4th paragraph, as being of
improper dependent form and claims 97-101, 105, 106, 109, 110, 113-117,
120, 121, 124, and 125 under 35 U.S.C. § 103(a) as unpatentable over
Congdon (US 5,149,491, iss. Sept. 22, 1992) and Ahlfeld (US 2008/0232535
Al, pub. Sept. 25, 2008). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-009272
Application 12/930,259
THE INVENTION
Appellants' invention relates to traveling wave nuclear reactors.
Spec. 3. Claim 97, the sole independent claim on appeal, is reproduced
below, is representative of the subject matter on appeal.
97. A method of operating a nuclear fission reactor, the
method comprising:
fissioning fissile nuclear fuel material in a plurality of
fissile nuclear fuel assemblies in a central core region of a
nuclear fission reactor core of a nuclear fission reactor;
breeding fissile material in ones of a plurality of fertile
nuclear fuel assemblies in the central core region of the nuclear
fission reactor core; and
shuffling selected ones of the plurality of fissile nuclear fuel
assemblies and selected ones and selected others of the plurality
of fertile nuclear fuel assemblies in a manner that establishes a
standing wave of breeding fissile nuclear fuel material and
fissioning fissile nuclear fuel material.
OPINION
Rejection of Claim 124
under Section 112, paragraph 4
The Examiner rejected claim 124 under 35 U.S.C. § 112, 4th
paragraph, as being of improper dependent form for failing to further limit
the subject matter of the claim upon which it depends, or for failing to
include all the limitations of the claim upon which it depends. Final
Action 4. According to the Examiner, all of the limitations in claim 124 are
present in claim 97, from which claim 124 depends. Id.
Appellants state that they disagree with the rejection, but offer nothing
of substance to controvert the rejection. Appeal Br. 26. Appellants
otherwise express a willingness to cancel claim 124. Id.
We sustain the Section 112 rejection of claim 124.
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Application 12/930,259
Unpatentability over Congdon and Ahlfeld
Claims 97-1 OJ, 105, 106, 109, 110, 113-117, 120, 121, and 125
The Examiner finds that Congdon discloses all of the elements of
claim 97 except for shuffling nuclear fuel assemblies in a manner that
establishes a standing wave. Final Action 5-8. The Examiner relies on
Ahlfeld as disclosing a nuclear reactor that includes assemblies of fissile and
fertile material that are shuffled in a manner that establishes a standing wave
of breeding fissile nuclear fuel material and fissioning fissile nuclear
material. Id. at 8. 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 Congdon with the teachings of Ahlfeld to achieve the claimed
invention. Id. According to the Examiner, a person of ordinary skill in the
art would have considered this as a predictable result to elongate the useful
life of a fuel assembly in a standing wave reactor. Id.
In traversing the rejection, Appellants raise a plethora of arguments,
many of which we need not consider to dispose of the instant appeal.
Appeal Br. 5-25. Among other things, Appellants argue that the Examiner
fails to set forth a sufficient rationale for combining Congdon and Ahlfeld.
Id. at 24. Appellants point out that Congdon is directed to a fuel
arrangement for boiling water (BWR) nuclear reactors. Id. at 16-17.
Appellants point out that Ahlfeld is directed to nuclear fission deflagration
wave reactors. Id. at 18-19.
In response, the Examiner merely states that obviousness does not
require the features of a secondary reference to be bodily incorporated into
the structure of the primary reference. Ans. 3 (citing In re Keller, 642 F.2d
413, 425 (CCPA 1981)). The Examiner also states that one cannot show
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Application 12/930,259
nonobviousness by attacking references individually where the rejections are
based on combinations of references. Id. (citing Keller, supra, and In re
Merck & Co., 800 F.2d 1091, 1097 (Fed. Cir. 1986). No additional factual
analysis is provided to augment the single, conclusory sentence in the Final
Action where the Examiner states that combining Congdon with Ahlfeld
produces a "predictable result." Final Action 8.
The Examiner's reliance on Keller and Merck is not sufficient to
sustain the rejection under the facts and circumstances of this case. Here,
the Examiner's primary reference is directed to older and, more-or-less,
conventional, boiling water reactor (BWR) technology. See Congdon,
col. 1, 11. 14--27. Such reactors rely on fissioning atoms such as uranium
U235. Id. col. 1, 11. 29--41. In contrast, Ahlfeld is directed to nuclear fission
deflagration wave reactors (aka traveling wave "TWR") that are breeders for
efficient nuclear fission fuel use and for minimizing the need for isotopic
enrichment. Ahlfeld i-fi-18, 30. The Examiner provides no factual analysis of
the differences between the BWR technology disclosed in Congdon and the
TWR technology disclosed in Ahlfeld. The Examiner presents no cogent
analysis that tends to explain how or why a person of ordinary skill in the art
would have found it obvious to modify a BWR reactor with TWR reactor
technology to achieve the claimed invention.
The obviousness inquiry requires a determination that a skilled artisan
would have been motivated to combine the teachings of the prior art
references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
2012). The presence or absence of a motivation to combine references in an
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Application 12/930,259
obviousness determination is a question of fact. See Par Pharm., Inc. v. TiVI
Pharm., Inc., 773 F.3d 1186, 1196 (Fed.Cir.2014). "The reasonable
expectation of success requirement refers to the likelihood of success in
combining references to meet the limitations of the claimed invention."
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821F.3d1359,
1367 (Fed. Cir. 2016). In other words, "one must have a motivation to
combine accompanied by a reasonable expectation of achieving what is
claimed in the patent-at-issue." Id.
In the instant case, the Examiner's finding of a motivation to combine
Congdon and Ahlfeld is too abbreviated and conclusory to be sustained. The
Examiner merely characterizes the outcome of combining Congdon and
Ahlfeld as "predictable," with no underlying factual analysis of the relevant
differences between BWR reactor technology and TWR reactor technology.
Final Action 8. When challenged by Appellants, the Examiner merely cites
Keller, supra, and Merck, supra, with no supporting factual analysis. It is
well settled that "rejections on obviousness grounds cannot be sustained by
mere conclusory statements; instead, there must be some articulated
reasoning with some rational underpinning to support the legal conclusion of
obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) quoted in
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). Such reasoning
with rational underpinning is absent in the rejection under review.
In view of the abbreviated and conclusory analysis provided by the
Examiner to support a combination of seemingly disparate technologies, we
agree with Appellants that the Examiner has failed to make out a prima facie
case of obviousness. See In re Jung, 637 F.3d 1356, 1362 (Fed. Cir. 2011)
(prima facie case requires notifying the applicant of the reasons for the
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rejection with such information as may be useful in judging the propriety of
continuing prosecution, and is not met "when a rejection is so uninformative
that it prevents the applicant from recognizing and seeking to counter the
grounds for rejection"); see Reply Br. 3---6; Appeal Br. 22-24. Accordingly,
we do not sustain the Examiner's unpatentability rejection of independent
claim 97 or its dependent claims 98-101, 105, 106, 109, 110, 113-117, 120,
121, and 125.
Claim 124
Inasmuch as we sustain the Section 112 rejection of claim 124, we do
not reach the art rejection of claim 124. See 37 C.F.R. § 41.50(a)(l).
DECISION
The decision of the Examiner to reject claim 124 under 35 U.S.C.
§ 112, 4th paragraph is AFFIRMED.
Having affirmed the Section 112 rejection of claim 124, we DO NOT
REACH the art rejection of claim 24.
The decision of the Examiner to reject claims 97-101, 105, 106, 109,
110, 113-117, 120, 121, and 125 as unpatentable under 35 U.S.C. § 103(a)
is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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