Ex Parte Cantonwine et al

Patent Trial and Appeal Board

May 20, 2013

12153415 (P.T.A.B. May. 20, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PAUL EVERETT CANTONWINE and
DAVID WILLIAM WHITE
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Appeal 2011-004433
Application 12/153,415
Technology Center 3600
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Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Paul Everett Cantonwine and David William White (“Appellants”)
appeal under 35 U.S.C. § 134 from the Examiner’s decision rejecting claims
1-12. We have jurisdiction under 35 U.S.C. § 6(b).
The Claimed Subject Matter
Claims 1 and 7 are the independent claims on appeal. Claim 1 is
illustrative of the claimed subject matter and is reproduced below.
1. A multi-layer material for a reactor
component, comprising:
a core layer; and
at least one cladding layer metallurgically-
bonded directly to the core layer,
the core layer and the at least one cladding
layer having different compositions, the core layer
having a higher weight percentage of niobium than
the at least one cladding layer, the core layer being
significantly more resistant to irradiation growth
than the at least one cladding layer, and the at least
one cladding layer having about 0.8 – 1.2 %
chromium by weight and an increased resistance to
hydrogen absorption relative to the core layer.

Claim 7 is directed to a fuel channel for a nuclear reactor comprising,
inter alia, “at least one cladding layer . . . the at least one cladding layer
having about 0.8 – 1.2 % chromium by weight.”
References
The Examiner relies upon the following prior art references:
Adamson US 5,805,656 Sept. 8, 1998
Adamson et al.1 US 5,524,032 June 4, 1996

1 The Examiner’s Answer incorrectly refers to Adamson et al. as “5524302.”
Ans. 3. Appellants, however, argue the rejection with the apparent
understanding that the Examiner intended to refer to U.S. Patent No.
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Rejection
The Examiner makes the following rejection:
I. Claims 1-12 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Adamson ’656 and Adamson ’032.
SUMMARY OF DECISION
We AFFIRM. We designate our affirmance as a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
OPINION
The Examiner concluded that the combination of Adamson ’656 and
Adamson ’032 would have rendered the subject matter of claims 1-12
obvious to one of ordinary skill in the art. Ans. 4-10. The Examiner found
that Adamson ’656 discloses most of the elements of the claims, except “at
least one cladding layer having about 0.8 – 1.2 % chromium by weight.”
Ans. 4. The Examiner found that Adamson ’032 discloses “at least one
cladding layer having at least about 0.01 percent chromium.” Id. (citing
Adamson ’032, col. 6, l. 32). The Examiner also found that although neither
reference specifically teaches at least one cladding layer having about 0.8 to
1.2 % chromium by weight, “differences in concentration will generally not

5,524,032. See, e.g., App. Br. 12. It appears that the Examiner’s Answer
inadvertently reversed the numerals “0” and “3.” See, e.g., Final Office
Action (mailed Apr. 20, 2009) at 2 (while not the final office action from
which this appeal was taken, the office action refers to U.S. Patent No.
5,524,032, and there is no indication in the file history that the Examiner
intended to rely upon U.S. Patent No. 5,524,302, which is directed to a
method and apparatus for extending and retracting swimming pool covers,
and identifies Kelly J. Ragsdale and Cory Brady as inventors). Accordingly,
we address the rejection, as did Appellants, with the understanding that the
Examiner relies upon the combination of U.S. Patent Nos. 5,805,656, and
5,524,032.
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support the patentability of subject matter encompassed by the prior art
unless there is evidence indicating such concentration is critical.” Id. at 4-5
(citing MPEP § 2144(II)(A)). The Examiner found that because the
originally filed claims did not include this limitation and the Specification
discloses chromium concentrations in other ranges, the chromium
concentration is not critical to the invention. Id. at 5. Further, because the
Examiner found that one of ordinary skill in the art is “expected to routinely
experiment with the parameters so as to ascertain the optimum or workable
ranges for a particular use,” the Examiner determined that it would have
been obvious to one of ordinary skill in the art “through routine
experimentation and optimization . . . to modify the amount of chromium in
the cladding layer.” Id.
Appellants assert several arguments in response to the rejection.2
First, Appellants contend that neither Adamson ’656 nor Adamson ’032
disclose a cladding layer having about 0.8 – 1.2 % chromium by weight.
See, e.g., App. Br. 16. Appellants assert that Adamson ’656 discloses an
outer layer having about 0.08 to 0.12 chromium by weight, “which is one-
tenth (1/10) of Appellants’ claimed range.” Id. at 15. Appellants further
assert that while Adamson ’032 discloses an inner surface that may be at
least about 0.01 percent chromium, the reference “goes on to clarify that the
chromium content . . . should be in the vicinity of ‘about 0.01 – 0.20 percent
chromium.’” Id. (quoting Adamson ’032, col. 6, l. 35; fig. 1). Appellants
thus contend that “there is no credible reason why it would have been

2 Appellants argue the claims subject to the rejection as a group. See App.
Br. 13-20. We select claim 1 as representative. Accordingly, claims 2-12
stand or fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(vii) (2011); see also
In re Lovin, 652 F.3d 1349, 1351 (Fed. Cir. 2011).
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obvious to just arbitrarily increase the concentration of Adamson ’656
(primary reference) by over six-fold or the concentration of Adamson ’302
(secondary reference) by four-fold for the mere purpose of reading on the
claims.” Id. at 16.
Second, Appellants assert the burden to prove criticality of the
claimed range has not shifted to them because “contrary to the Examiner’s
belief, the obviousness of ranges described in MPEP 2144.05 is not even
applicable to the facts hand . . . . [because] Appellants’ claimed range is not
even overlapped, much less encompassed by the cited art.” Id. at 17.
Instead, Appellants contend that the Examiner failed to meet the initial
burden of establishing a prima facie case of unpatentability. Id.
Third, Appellants contend that Adamson ’656 discloses a
concentration of chromium with respect to a composite material for channel
12, whereas Adamson ’032 discloses concentrations of chromium with
respect to fuel rod container 17, and not its channel C. Reply Br. 4. Thus,
Appellants assert that the Examiner’s combination would result in one of
ordinary skill in the art being motivated to utilize the improved fuel rod
container 17 of Adamson ’032 to form the fuel rods 14, as opposed to
channel 12, of Adamson ’656. Id.
Fourth, Appellants assert that the chromium range of Adamson ’656 is
disclosed in connection with the “outer layers” of the composite channel
material, whereas the chromium concentration of Adamson ’032 is disclosed
in connection with the “sandwiched barrier layer 22 of the fuel cladding
material.” Id. at 5. Appellants thus contend that the barrier layer 22 is more
akin to a core layer since it is sandwiched between substrate 21 and inner
liner 23. Id. Accordingly, Appellants assert that “there is no credible reason
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why it would have been obvious to just increase the chromium range of the
outer layers of Adamson ’656 (much less increase it to the claimed range)
based on the disclosed chromium concentration of the core layer 22 of
Adamson ’302.” Id.
We address each of Appellants’ arguments. First, and foremost,
Appellants’ first and second arguments are based on a misunderstanding of
the disclosure of Adamson ’032. Adamson ’032 discloses that suitable
concentrations of alloying elements at the “zirconium barrier inner surface”
include “at least about 0.01 percent chromium.” Adamson ’032, col. 6,
ll. 28-31. It further discloses that “[m]ore preferably, these concentrations
should be . . . between about 0.01-0.20 percent chromium.” Id. at col. 6,
ll. 33-35. Contrary to Appellants’ argument, this disclosure does not clarify
that the chromium content of the inner surface of the barrier layer 22 should
be in the vicinity of about 0.01 – 0.20 percent chromium, it simply states that
0.01 to 0.20 percent chromium is a preferred range. It does not negate the
disclosure of the broad open-ended range of at least about 0.01 percent
chromium. Notably, claim 4 of Adamson ’032 confirms that the disclosure
of a preferred range does not, in and of itself, limit the teaching of “at least
about 0.01 percent chromium” to a maximum of 0.2 percent. Claim 4 states:
4. The cladding tube of claim 2 wherein the alloying
elements are present in the zirconium barrier layer’s interface
with the inner liner in excess concentrations of . . . about 0.01
to 0.4 weight percent chromium . . . .

Adamson ’032, col. 11, ll. 3-7 (emphasis added); see Ans. 13. Accordingly,
Adamson ’032 discloses chromium concentrations greater than 0.20 percent
by weight—it discloses concentrations of “at least about 0.01” and “0.4”
percent.
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Second, the disclosed range of “at least about 0.1” percent chromium
in Adamson ’032 encompasses the claimed range of 0.8 to 1.2 percent
chromium, and the difference between the lower end of claimed range—0.8
percent chromium—is only a two-fold increase, not a four-fold or greater
increase, over the explicit disclosure of 0.4 percent chromium. In
circumstances such as these, where the prior art discloses a range that both
overlaps the claimed range and a specific percentage that is close to the
claimed percentage, the prior art creates a prima facie case of obviousness.
See Titanium Metals Corp. of Am. v. Banner, 778 F.2d 775, 782-83 (Fed.
Cir. 1985) (“The proportions are so close that prima facie one skilled in the
art would have expected them to have the same properties.”); Haynes Int’l,
Inc. v. Jessop Steel Co., 8 F.3d 1573, 1577 n.3 (Fed. Cir. 1993) (“[W]hen the
difference between the claimed invention and the prior art is the range or
value of a particular variable, then a prima facie rejection is properly
established when the difference in range or value is minor.”).
Appellants may rebut the prima facie case of obviousness by
(1) “establish[ing] the existence of unexpected properties in the range
claimed” or (2) showing “that the art in any material respect taught away
from the claimed invention.” In re Geisler, 116 F.3d 1465, 1469 (Fed. Cir.
1997) (quotations and citations omitted); see Ormco Corp. v. Align Tech.,
Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006) (same) (citing Iron Grip Barbell
Co. v. USA Sports, Inc., 392 F.3d 1317, 1322 (Fed. Cir. 2004)) (other
citations omitted); see also In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990) (Appellants “must show that the particular range is critical, generally
by showing that the claimed range achieves unexpected results relative to the
prior art range.”).
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Here, we agree with the Examiner that, in light of the teachings of
Adamson ’656 and Adamson ’032, a prima facie case of obviousness has
been established. See Ans. 11 (noting that the burden shifted to Appellants
to prove criticality of the claimed range because the claimed range overlaps
with the range disclosed in Adamson ’032). Rather than assert that the
claimed range exhibits unexpected properties such that the range is critical
or that the prior art taught away from the claimed invention, Appellants
argued only that the burden to do so had not shifted to them.3 As explained
above, however, Appellants are incorrect.
With respect to Appellants’ third and fourth arguments, we disagree
that one of ordinary skill in the art would not have been motivated to
combine the teachings of the references by using a higher percentage of
chromium, such as 0.8 percent, within the disclosed range of Adamson ’032
and close to the 0.4 percent explicitly disclosed. Adamson ’656 discloses
that one purpose of the outer layer (i.e., outer cladding) is corrosion
resistance. See Adamson ’656, col. 4, l. 66 – col. 5, l. 9. Adamson ’032
similarly discloses that the “alloying elements” should be present “in
concentrations sufficient to provide some measure of protection against
accelerated corrosion without significantly compromising the compliance of
the zirconium.” Adamson ’032, col. 6, ll. 19-22. Adamson ’032 further
discloses that
[i]t is especially important that the alloying elements be present
at the inner surface of the zirconium barrier layer (adjacent to
the inner liner). This ensures that if the barrier layer becomes
exposed to a corrosive environment as a result of a defect in the

3 Appellants have not submitted any evidence to rebut the presumption of
obviousness.
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inner liner, the barrier layer’s inner surface will have some
measure of corrosion protection.

Id. at col. 6, ll. 22-28. Accordingly, one of ordinary skill in the art would
understand that the disclosures in Adamson ’656 and Adamson ’032 relate to
material layers (e.g., cladding layers) that exhibit corrosion resistance.
Given the relatedness of the discloses in Adamson ’656 and Adamson ’032
and the similar purposes to which the materials are directed, we find that one
of ordinary skill in the art would be prompted to increase the chromium
percentages in the cladding layer of Adamson ’656 to include chromium
percentages as disclosed by Adamson ’032 (which encompass the claimed
range) because this modification is merely the substitution of one element
for another known in the field that would yield a predictable result. See KSR
Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007) (“[W]hen a patent claims
a structure already known in the prior art that is altered by the mere
substitution of one element for another known in the field, the combination
must do more than yield a predictable result.”).
Accordingly, we sustain the rejection.
We designate our affirmance of the rejection, however, as a NEW
GROUND OF REJECTION so as to provide Appellants with a full and fair
opportunity to respond to the thrust of the rejection because the reasoning
upon which we rely to sustain the rejection of claims 1-12 under 35 U.S.C.
§ 103(a) differs somewhat from the reasoning relied upon by the Examiner.
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DECISION
We AFFIRM the Examiner’s decision rejecting claims 1-12 and
designate our affirmance as a NEW GROUND OF REJECTION.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
Examiner, in which event the proceeding will be remanded to
the Examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

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).

AFFIRMED; 37 C.F.R. § 41.50(b)

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