Ex Parte BLACKBURN

Board of Patent Appeals and Interferences

Mar 31, 2010

09360582 (B.P.A.I. Mar. 31, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte BRANDON W. BLACKBURN
____________

Appeal 2009-003097
Application 09/360,582
Technology Center 3600
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Decided: March 31, 2010
____________

Before: JENNIFER D. BAHR, JOHN C. KERINS, and STEVEN D.A.
McCARTHY, Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL
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Application 09/360,582

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STATEMENT OF THE CASE
Brandon W. Blackburn (Appellant) appeals under 35 U.S.C. § 134
(2002) from the Examiner’s decision rejecting claims 1, 4, 5, 7, and 8, which
are the only claims pending in the application. We have jurisdiction over
this appeal under 35 U.S.C. § 6 (2002).

The Invention
Appellant’s claimed invention is directed to high powered accelerator
based neutron sources having liquid cooled targets. Spec. 2:6-7.
Claim 8, reproduced below, is illustrative of the claimed subject
matter.
8. A liquid cooling system for a neutron source
assembly, said cooling system comprising:
a reservoir of liquid gallium;
a heat exchanger;
a nozzle, said nozzle being submerged in
liquid gallium, providing a submerged jet of
concentrated liquid gallium in a direction normal
to a non-bombarded surface of a low Z target
material within the neutron source assembly; and
means for serially circulating said liquid
gallium from said reservoir through said nozzle to
impinge upon said surface of the low Z target
material within the neutron source assembly, from
the neutron source assembly directly to said heat
exchanger, and from said heat exchanger to said
reservoir.

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The Rejections
Appellant seeks review of the Examiner’s rejection of claims 1, 4, 5,
7, and 8 under 35 U.S.C. § 112, first paragraph, as containing subject matter
not described in the specification in such a way as to reasonably convey to
one skilled in the art that Appellant had possession of the claimed invention
at the time the application was filed (i.e., as failing to comply with the
written description requirement); and of claims 1, 4, 5, 7, and 8 under 35
U.S.C. § 103(a) as being unpatentable over Eggers1, Lidsky2, Pais3, and
Alger4.

SUMMARY OF DECISION
We AFFIRM.

OPINION
The written description rejection
The Issue
The Examiner asserts that the limitation in each of the independent
claims 1, 5, and 8 with respect to the nozzle being submerged in liquid
gallium is not described in the application as originally filed so as to satisfy
the written description requirement of 35 U.S.C. § 112, first paragraph. Ans.

1 US Patent 5,392,319, issued Feb. 21, 1995.
2 US Patent 5,784,423, issued Jul. 21, 1998.
3 M. R. Pais et al., Single-Phase Heat Transfer Characteristics of Submerged
Jet Impingement Cooling Using JP-5, 1994 InterSociety Conference on
Thermal Phenomena, 178, 178-83 (IEEE 1994).
4 US Patent 4,141,224, issued Feb. 27, 1979.
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4. The claims were amended to incorporate this limitation in the
Amendment filed September 26, 2006.
Appellant contends that original figure 2 shows an outlet 30 located
above the top surface of the beryllium target 32. App. Br. 6. Appellant also
points out that the Specification, at the time the application was filed, “at
page 6, lines 7-8, explicitly states that liquid gallium fills the chamber 40
and exits therefrom.” Id. Thus, Appellant reasons that “the chamber must
be filled with liquid gallium before exiting” because otherwise “the chamber
will never fill.” Id. According to Appellant, absent statements to the
contrary, the teaching that the chamber is filled with liquid gallium conveys
that it is entirely, or completely, filled, not partially filled. Id. Therefore,
Appellant argues that “the originally filed specification teaches that the jet of
liquid gallium 37 is submerged in the reservoir 40 because the reservoir 40 is
filled with liquid gallium.” Id.
Appellant additionally relies upon the disclosure in the Specification,
at the time the application was filed, of testing with a water coolant using a
submerged jet impingement configuration (see Spec. 6:17-19) as supporting
the submerged nozzle limitation. App. Br. 7.
Accordingly, the issue before us is whether the illustration in
Appellant’s figure 2, the disclosure that “[t]he liquid gallium fills chamber
40 and exits to the heat exchanger 24” (Spec. 6:11-12), and disclosure of
initial tests using water coolant “in a submerged jet impingement
configuration” (Spec. 6:17-19) are sufficient to satisfy the written
description requirement for the submerged nozzle limitation in independent
claims 1, 5, and 8.
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Discussion
The description requirement found in the first paragraph of 35 U.S.C.
§ 1l2 is separate and distinct from the enablement requirement of that
provision. Ariad Pharm., Inc. v. Eli Lilly and Co., --- F.3d ----, 2010 WL
1007369, at *12 (Fed. Cir. 2010) (citing Vas-Cath, Inc. v. Mahurkar, 935
F.2d 1555, 1562-63 (Fed. Cir. 1991)). The purpose of the written
description requirement in 35 U.S.C. § 112, first paragraph, is to “‘clearly
allow persons of ordinary skill in the art to recognize that [the inventor]
invented what is claimed.’” Id. “[T]he test for sufficiency is whether the
disclosure of the application relied upon reasonably conveys to those skilled
in the art that the inventor had possession of the claimed subject matter as of
the filing date.” Ariad, 2010 WL 1007369 at *12. This test “requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art.” Id. “Based on that
inquiry, the specification must describe an invention understandable to that
skilled artisan and show that the inventor actually invented the invention
claimed.” Id. This inquiry is a question of fact. Id. (citing Ralston Purina
Co. v. Far-Mar-Co, Inc., 772 F.2d 1570, 1575 (Fed. Cir. 1985)).
We find that Appellant’s Specification describes figure 2 as “a cross
sectional illustration of a portion 30 of the accelerator based neutron source
12.” Spec. 6:3-4; see also Spec. 5:7-8. Appellant’s Specification, however,
does not indicate the plane upon which the cross sectional illustration is
taken. See 37 C.F.R. § 1.84(h)(3) (2007). Consequently, it cannot be
determined whether the section illustrated in figure 2 is taken along a
horizontal plane, a vertical plane, or some other orientation, or whether the
view is from above, below, to the left of, or to the right of the section plane.
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Moreover, Appellant’s reference to “the outlet 30” (App. Br. 6) is not
supported by the Specification, which uses the reference numeral 30 to
denote a portion of the accelerator based neutron source 12, not the outlet
from the chamber 40. Appellant’s Specification does not identify any
structure in figure 2 as the outlet, or exit, through which the liquid gallium
exits chamber 40. While figure 2 appears to depict some sort of opening or
port structure proximate the lead line for the reference numeral “30,” there is
no indication in either figure 2 or the accompanying description in the
Specification that this structure is the outlet from chamber 40, through which
the liquid gallium exits the chamber, rather than, for example, an inlet port
for admission of purge gases, or some other structure. Thus, Appellant’s
figure 2 and the accompanying description of figure 2 in the Specification do
not reasonably convey that the liquid gallium must rise to a level above the
nozzle 34 prior to exiting the chamber 40.
We find that figure 2 is sufficient to convey that the nozzle 34 is
disposed within chamber 40 of the accelerator based neutron source 12. We
do not find, however, that the disclosure that “[t]he liquid gallium fills
chamber 40 and exits to the heat exchanger 24” (Spec. 6:11-12) is sufficient
to reasonably convey that the liquid gallium completely fills the chamber 40,
as urged by Appellant, such that all structures located within the chamber 40
are submerged in the liquid gallium. Appellant urges, in essence, that the
plain meaning of this disclosure excludes a partial filling, and, in the absence
of further statements to the contrary, requires complete filling of the
chamber. See App. Br. 6. Appellant has not shown, however, that the term
“fill” has established such a plain meaning in the art, such that a person of
ordinary skill in the art would understand that the teaching “[t]he liquid
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gallium fills chamber 40 and exits to the heat exchanger 24” excludes a
filling of only part of the capacity, or volume, of the chamber. Moreover, as
explained more fully below, our findings do not indicate that the term “fill”
has established such a meaning in the art.
While we find dictionary definitions of “fill” that support Appellant’s
assertion that “fill” means to fill the entire capacity or volume, we also find
dictionary definitions that suggest a broader meaning of “fill” that would
encompass filling to less than the entire capacity. See, e.g., Webster's New
World College Dictionary (2009), http://www.yourdictionary.com/fill (last
visited Mar. 30, 2010) (defining “fill” as “a) to put as much as possible into;
make full b) to put a considerable quantity of something into [to fill the tub
for a bath, to fill one’s life with joy]”). As noted above, compliance with the
written description requirement is viewed from the perspective of a person
of ordinary skill in the art. Thus, given the different established meanings of
the term “fill” generally, the relevant inquiry is whether this term has
established an unambiguous meaning in the art in accordance with the
Appellant’s asserted definition. We find that Alger evidences that this is not
the case. Specifically, Alger discloses that liquid coolant “fills the chamber
13.” Col. 2, ll. 47-49 (emphasis added). Alger’s description of the operation
of float switch 37 and baffles 41 (col. 2, ll. 40-57), and their depiction in
figure 1, however, suggest that the liquid coolant does not fill the entire
volume of the chamber 13 prior to the float switch reaching its up position.
Finally, even assuming that a person of ordinary skill in the art would
have understood from Appellant’s Specification that the disclosure in
Appellant’s Specification of initial tests using water coolant “in a submerged
jet impingement configuration” (Spec. 6:18-19) applies equally to the
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embodiment of the invention using liquid gallium as the coolant, this
disclosure is insufficient to convey that the nozzle 34 of Appellant’s
invention is submerged in liquid gallium, as now required in each of
independent claims 1, 5, and 8. As pointed out by the Examiner on page 4
of the Answer, “‘submerged jet’ does not necessarily mean ‘submerged
nozzle.’” We find that Pais evidences that the terminology “submerged jet”
(whether “partially” submerged or “fully” submerged) was used in the art to
describe a jet that travels, for at least some distance, through a pool of liquid
on its way to the surface to be cooled, as distinguished from a “free jet,”
which travels through air, or other gas, on its way to the surface to be
cooled. See Pais, p. 178, Abstract and figure 1, p. 182 (distinguishing
submerged nozzle scenarios from submerged or flooded surface scenarios,
defining “free jet impingement” cooling as a scenario wherein the liquid
height above the surface is 0 mm, distinguishing the “free jet” case from the
case of a flooded surface, and characterizing scenarios other than the “free
jet” scenario as “submerged jet” scenarios). In accordance with such usage,
a “submerged jet impingement configuration” describes either a
configuration in which the nozzle and jet are submerged (a “fully
submerged” configuration) or a configuration in which the jet is either fully
or partially submerged, but the nozzle is not submerged. Accordingly, we
find that that disclosure of “a submerged jet impingement configuration”
would not convey that the nozzle, as well as the jet, necessarily is submerged
in liquid gallium.
Further, while a person of ordinary skill in the art might envision a
submerged nozzle as one possible embodiment of Appellant’s invention, this
is not sufficient to satisfy the written description requirement. When an
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explicit limitation in a claim “is not present in the written description whose
benefit is sought it must be shown that a person of ordinary skill would have
understood, at the time the patent application was filed, that the description
requires that limitation.” Hyatt v. Boone, 146 F.3d 1348, 1353 (Fed. Cir.
1998).
To establish inherency, the extrinsic evidence ‘must make clear
that the missing descriptive matter is necessarily present in the
thing described in the reference, and that it would be so
recognized by persons of ordinary skill.’ ‘Inherency, however,
may not be established by probabilities or possibilities. The
mere fact that a certain thing may result from a given set of
circumstances is not sufficient.’
In re Robertson, 169 F.3d 743, 745 (Fed. Cir. 1999) (citations omitted).
Conclusion
The illustration in Appellant’s figure 2, the disclosure that “[t]he
liquid gallium fills chamber 40 and exits to the heat exchanger 24” (Spec.
6:11-12), and disclosure of initial tests using water coolant “in a submerged
jet impingement configuration” (Spec. 6:17-19) are insufficient to satisfy the
written description requirement for the submerged nozzle limitation in
independent claims 1, 5, and 8. We sustain the Examiner’s rejection of
claims 1, 5, and 8, as well as claims 4 and 7, which depend from claims 1
and 5.
The obviousness rejection
The Issue
Each of independent claims 1, 5, and 8 requires either a step of
pumping (claim 1) or a means for serially circulating (claims 5 and 8) the
liquid gallium from the reservoir through the nozzle to impinge upon the
surface of the low Z target material within the neutron source assembly,
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from the neutron source assembly directly to the heat exchanger, and from
the heat exchanger to the reservoir. The Examiner finds that Eggers does
not satisfy this limitation. Ans. 7, 10, and 13. In order to overcome this
deficiency, the Examiner seemingly proposes to modify Eggers by
incorporating the cooling fluid circulation arrangement taught by Alger,
comprising reservoir 23, heat exchanger 28, an accelerator based neutron
source 11, pump 27, and nozzle 29 (see Alger, figs. 1 and 2) into the system
of Eggers to circulate, and re-circulate, the cooling fluid. See Ans. 7, 10-11,
and 13-14.
Appellant argues that Alger discloses pumping the cooling fluid from
the neutron source assembly directly to the reservoir, from which the fluid
may travel directly back to the pump or may travel to a heat exchanger to
remove heat from the coolant. App. Br. 14. Thus, according to Appellant,
Alger “unequivocally, fails to disclose or suggest pumping the liquid
gallium, serially, from the neutron source assembly directly to a heat
exchanger to remove heat from the liquid gallium, and from the heat
exchanger to the reservoir.” App. Br. 15 (emphasis in original).
In response, the Examiner asserts that in light of Appellant’s
disclosure of components 26 and 28 (see fig. 1), the term “directly” in claims
1, 5, and 8 cannot be construed in the sense of “‘without any component
interposed.’” See Ans. 18.
Accordingly, an issue raised in this appeal is whether the Examiner
has established that the combined teachings of Eggers, Lidsky, Pais, and
Alger render obvious a means for or step of serially circulating the liquid
gallium in Eggers’ system from the accelerator based neutron source
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“directly” to the heat exchanger and from the heat exchanger to the
reservoir, as called for in claims 1, 5, and 8.
Discussion
When claim terminology is construed in the United States Patent and
Trademark Office, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004).
We find that ordinary and customary usages of the term “directly” are
“1. in a direct way or line; straight 2. with nothing or no one between”
Webster's New World College Dictionary (2009),
http://www.yourdictionary.com/directly (last visited Mar. 30, 2010). We
further find that Appellant’s Specification and figure 1 describe a
pumping/circulation system in which the liquid gallium flows from the
accelerator based neutron source 12 through a heat exchanger 24, without
first flowing into any other component of the fluid cycle between the
accelerator based neutron source 12 and the heat exchanger 24, and back to
the reservoir 14. Spec. 5:18-19. While Appellant discloses that a pressure
sensor 26 is used to monitor the pressure of the liquid gallium as it flows
from the accelerator based neutron source 12 to the heat exchanger 24 (Spec.
5:19-20), such pressure monitoring does not divert, interrupt, or significantly
alter the flow of the liquid gallium, and thus is not an active component of
the circulation system.5 As such, we find that the underlying disclosure in

5 Appellant also describes a check valve 28 disposed in the flow line
between heat exchanger 24 and reservoir 14. Spec. 5:20-21; fig. 1. This is
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Appellant’s Specification and figure 1 is consistent with usage of the term
“directly” in accordance with its ordinary and customary meaning of
straight, with nothing or no one between. Appellant’s underlying disclosure
does not reasonably invite the broad construction of “directly” applied by the
Examiner (Ans. 18). See Stumbo v. Eastman Outdoors, Inc., 508 F.3d 1358,
1362 (Fed. Cir. 2007) (denouncing claim constructions which render phrases
in claims superfluous).
We find that Alger describes a closed loop system for circulating a
liquid coolant, wherein the coolant is pumped from isothermal reservoir 23,
by means of pump 27, to nozzle 29 into chamber 13 for cooling accelerator
target 11, then from chamber 13 back to reservoir 23. Figs. 1 and 2. The
liquid coolant does not flow through the cooling system 28 (the heat
exchanger) until after it has returned to the reservoir. Id. Thus, we find that
Alger does not describe circulating liquid coolant serially from a reservoir to
the accelerator based neutron source, from the accelerator based neutron
source directly to a heat exchanger, and from the heat exchanger to the
reservoir. The Examiner has not relied on any of Eggers, Lidsky, or Pais in
addressing the limitations in claims 1, 5, and 8 directed to such serial
circulation. Further, the Examiner has not cogently explained how Eggers
would be modified in view of Alger’s circulation system so as to satisfy
these limitations, other than by essentially reading the term “directly” out of
the claim.

not relevant to the construction of the term “directly,” however, as none of
the claims calls for the liquid gallium to be circulated directly from the heat
exchanger to the reservoir.
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Conclusion
The Examiner has failed to establish that the combined teachings of
Eggers, Lidsky, Pais, and Alger render obvious a means for or step of
serially circulating the liquid gallium in Eggers’ system from the accelerator
based neutron source “directly” to the heat exchanger and from the heat
exchanger to the reservoir, as called for in claims 1, 5, and 8. We do not
sustain the rejection of claims 1, 5, and 8, or claims 4 and 7, which depend
from claims 1 and 5, respectively.

DECISION
The Examiner’s decision 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). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2007).
AFFIRMED

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