Ex Parte Choi et al

Patent Trial and Appeal Board

Dec 2, 2016

14045129 (P.T.A.B. Dec. 2, 2016)

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.
14/045,129 10/03/2013 Jor-Shan Choi IL-11584C 6931
24981 7590 12/06/2016
Lawrence Livermore National Security, LLC
LAWRENCE LIVERMORE NATIONAL LABORATORY
PO BOX 808, L-703
EXAMINER
WANG, XIAOBEI
LIVERMORE, CA 94551-0808 ART UNIT PAPER NUMBER
1784
NOTIFICATION DATE DELIVERY MODE
12/06/2016 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):
llnl-docket@llnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JOR-SHAN CHOI, JOSEPH C. FARMER,
CHUCK K. LEE, JEFFREY WALKER,
PAIGE RUSSELL, JON KIRKWOOD,
NANCY YANG, and VICTOR CHAMPAGNE
Appeal 2015-005655
Application 14/045,1291
Technology Center 1700
Before ADRIENE LEPIANE HANLON, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
PER CURIAM.
DECISION ON APPEAL
A. STATEMENT OF THE CASE
Appellants filed an appeal under 35 U.S.C. § 134(a) from the Examiner’s
decision finally rejecting claim 18 under 35 U.S.C. § 103(a) as unpatentable over
1 According to Appellants, the real parties in interest are Lawrence Livermore
National Security, LLC and the United States of America as represented by the
United States Department of Energy (DOE). Appeal Br. 2.
Appeal 2015-005655
Application 14/045,129
Smolik2 in view of Decroix3 and DeMeo4 and claim 19 under 35 U.S.C. § 103(a)
as unpatentable over Smolik in view of Ehud5 and DeMeo.
We have jurisdiction under 35 U.S.C. § 6(b).6
We AFFIRM.
STATEMENT OF THE CASE
The subject matter on appeal relates to corrosion resistant neutron absorbing
coatings (see claims 18 and 19). Appellants disclose that materials with unusually
long service lifetimes are needed for containers and structures used for the long­
term storage or disposal of spent nuclear fuel and high-level waste. Spec. 110.
According to Appellants, storage systems need to contain spent nuclear fuel and
high-level waste for a time period as short as 10,000 years but as long as 300,000
years. Id. However, the most robust materials are challenged by such long time
periods. Id. In view of this, Appellants disclose neutron absorbing materials, such
as metal-ceramic composites, engineered for outstanding corrosion resistance. Id.
at 13.
Independent claim 18 is illustrative and is reproduced below from the
2 Branagan et al., WO 99/43005, published Aug. 26, 1999. Both the Examiner and
Appellants refer to WO 99/43005 as “Smolik” (the second inventor listed on WO
99/43005). For consistency, we will do so here.
3 Decroix et al., US 5,590,393 A, issued Dec. 31, 1996 (“Decroix”).
4 DeMeo et al., US 2005/0211930 Al, published Sept. 29, 2005 (“DeMeo”).
5 Greenspan, US 5,416,333 A, issued May 16, 1995. Both the Examiner and
Appellants refer to US 5,416,333 as “Ehud,” which is the first name of the
inventor. For consistency, we will do so here.
6 Our decision refers to the Appellants’ Specification filed Oct. 3, 2013 (Spec.), the
Final Office Action mailed Oct. 24, 2014 (“Final”), the Appeal Brief filed Dec. 10,
2014 (Appeal Br.), the Examiner’s Answer mailed Feb. 26, 2015 (Ans.), and the
Reply Brief filed Mar. 2, 2015 (Reply Br.).
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Application 14/045,129
Claims Appendix of the Appeal Brief.7 The limitations at issue are italicized.
18. A corrosion resistant neutron absorbing coating on the surface of
a spent nuclear fuel storage container, consisting of
a composite material made of
an iron-based amorphous metal,
a neutron absorbing material of neutron-absorbing boron, and
ceramic nano-particles, where the ceramic nano-particles are
oxides, borides, carbides, or nitrides and wherein said composite
material is connected to the surface of the spent nuclear fuel storage
container.
B. DISCUSSION
Rejection over Smolik, Decroix, and DeMeo
Claim 18 is rejected under 35 U.S.C. § 103(a) as unpatentable over Smolik
in view of Decroix and DeMeo. The dispositive issue on appeal is whether the
combination of Smolik, Decroix, and DeMeo requires any additional element
outside the scope of claim 18.
In the rejection of claim 18, the Examiner finds Smolik discloses an iron-
based amorphous material containing boron that is used as a neutron absorbing
material for highly enriched spent nuclear fuels. The Examiner finds Smolik does
not expressly teach ceramic nano-particles. Ans. 2. The Examiner finds Decroix
teaches the use of titanium boride in a metal matrix for neutron absorbing materials
to provide crack propagation resistance and improve thermal shock resistance. Id.
at 2—3. The Examiner concludes it would have been obvious to modify the
material of Smolik to include the titanium boride of Decroix. Id. at 3.
7 Appeal Br. Claims Appendix 25.
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Application 14/045,129
The Examiner finds Decroix does not disclose that its titanium boride
material is in the form of nanoparticles. Id. The Examiner finds DeMeo discloses
the use of ceramic nanoparticles, including titanium boride, is advantageous in
comparison to larger ceramic particles because a greater proportion of radiation
absorbent material is present in shielding using the particles. Id. The Examiner
concludes it would have been obvious to use the titanium boride particles of
Smolik, as modified by Decroix, in the form of nanoparticles, as taught by DeMeo.
Id.
Citing the “consisting of’ language of claim 18, Appellants contend the
combination of Smolik, Decroix, and DeMeo presents additional elements not
specified in claim 18 and therefore claim 18 would not have been obvious over
Smolik, Decroix, and DeMeo. In particular, Appellants argue the material of
Smolik includes gadolinium, europium, and samarium as additional elements that
do not fall within the categories of “an iron-based amorphous metal” or “a neutron
absorbing material of neutron-absorbing boron,” as recited in claim 18. Appeal Br.
11—14; Reply Br. 4—6.
In response to Appellants’ arguments, the Examiner interprets the language
“iron-based amorphous metal” of claim 18 under the broadest reasonable
interpretation of Appellants’ Specification to permit the inclusion of alloying
additions. Ans. 6—7. The Examiner’s interpretation is supported by the record.
Appellants disclose that the coating material can be iron-based amorphous
metals with relatively large concentrations of boron, which “can be enhanced with
neutron poisons including, but not limited to: (a) gadolinium, (b) hafnium, (c)
erbium, (d) dysprosium, and (e) cadmium” and “can also be enhanced with the
addition of moderator materials, including but not limited to: (i) carbon, (ii)
carbides, (iii) hydrogen isotopes, and (iv) hydrides.” Spec. 118. Therefore,
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Application 14/045,129
Appellants’ Specification supports the Examiner’s interpretation of the claimed
“iron-based amorphous metal” as including alloying additions. Ans. 6.
Appellants respond to the Examiner’s interpretation by asserting that the
material of Smolik is not an alloy, “[t]he Smolik reference does not disclose
‘alloying additions of gadolinium, samarium and europium’” (emphasis omitted),
and “[t]he Smolik reference does not contain the word ‘alloy.’” Reply Br. 3^4.
These arguments are not persuasive of reversible error.
Smolik describes “a neutron absorbing material” by “providing a base alloy
composition consisting of one or more rare earth elements and a transition metal
selected from the group consisting of iron, cobalt, nickel, copper, silver and
mixtures thereof.” Smolik p. 2,11. 19—23. Smolik further discloses how “[i]ron
based alloys are particularly attractive as a host for neutron absorbers due to the
low cost of the base metal.” Id. at p. 4,11. 11—12. Although conventional methods
cannot make iron or conventional steel alloys in the amorphous state, Smolik
discloses that additions of glass forming elements, such as boron, can be used to
make iron-based amorphous metals. Id. at p. 4,11. 19—21. Smolik also discloses
boron as a possible interstitial element for inclusion in the base alloy composition.
Id. at p. 2,11. 29-31. Smolik discloses that rare earth elements “additionally
increase the glass forming ability of the iron based compositions” and preferable
rare earth elements are “selected from the group consisting of gadolinium,
samarium and europium.” Id. at p. 4,11. 28—29; p. 2,11. 26—27. Therefore, Smolik
not only uses the term “alloy” but describes an iron-based alloy composition that
includes boron and rare earth elements, such as gadolinium, samarium and
europium, as alloying additions which, for the reasons discussed above, are not
excluded by claim 18.
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Application 14/045,129
Appellants further argue Decroix and DeMeo present additional elements,
citing boron carbide pellets and hafnium diboride clusters disclosed by Decroix
and a radiopaque polymeric article and a full body suit disclosed by DeMeo.
Appeal Br. 14—16; Reply Br. 6—7. These arguments are also not persuasive of
reversible error. As stated above, the Examiner relies upon Decroix for the
disclosure of titanium boride in neutron absorbing materials. Appellants have
failed to show that titanium boride must be combined with the additional elements
disclosed in Decroix (i.e., boron carbide pellets and hafnium diboride clusters) to
provide crack propagation resistance and improve thermal shock resistance in
Smolik’s material. Thus, it is of no moment in the rejection on appeal that the
invention of Decroix includes “additional elements.”
Similarly, the Examiner relies on DeMeo for the disclosure of nano-sized
ceramic particles, including titanium boride, in shielding materials. Appellants
have failed to show that the “additional elements” identified above (i.e., a
radiopaque polymeric article and a full body suit) are required “in order for the
ceramic nanoparticles of DeMeo to have efficacy” in Smolik’s material. Final 3;
see also Ans. 10.
In sum, Appellants have not shown reversible error in the Examiner’s
modification of Smolik to use the titanium boride particles of Decroix and to make
the particles nano-sized, as taught by DeMeo. Therefore, the § 103(a) rejection of
claim 18 over the combination of Smolik, Decroix, and DeMeo is sustained.
Rejection over Smolik, Ehud, and DeMeo
As in the rejection of claim 18, the Examiner finds Smolik discloses an iron-
based amorphous material containing boron. However, the Examiner finds Smolik
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Application 14/045,129
does not expressly teach ceramic hydride nano-particles as recited in claim 19.8
Ans. 4. The Examiner finds Ehud discloses the use of hydrides, such as titanium
hydride and lithium hydride, as neutron absorbing materials but not in nano-sized
form. Id. The Examiner finds DeMeo discloses the advantage of using ceramic
nano-sized particles in shielding to provide a greater proportion of radiation
absorbing material and improve radiation absorption rates. Id. The Examiner
concludes it would have been obvious to modify Smolik in view of Ehud and
DeMeo to include nano-size hydrides. Id.
Citing the “consisting of’ language of claim 19, Appellants argue Smolik
provides additional elements to those recited in claim 19, citing Smolik’s
disclosure of gadolinium, europium, and samarium. Appeal Br. 18—21; Reply Br.
8. Claim 19 recites “an iron-based amorphous metal,” similar to claim 18. For the
reasons discussed above in the rejection of claim 18, claim 19 does not exclude
gadolinium, europium, and samarium as disclosed in Smolik, which are used as
alloying additions in Smolik’s iron-based amorphous alloy.
Appellants further contend Ehud and DeMeo require additional elements to
those recited in claim 19, citing the radiopaque polymeric article and full body suit
disclosed by DeMeo and a shielding material disclosed by Ehud. Appeal Br. 21—
23; Reply Br. 8—9. These arguments are also unpersuasive of reversible error
because the Examiner relies upon Ehud for the disclosure of hydrides as neutron­
absorbing materials and DeMeo for the advantages of using ceramic materials in
nano-sized form for shielding. Appellants have failed to show that the shielding
material disclosed in Ehud “is required in order ... for the hydrides of Ehud to
8 In the rejection of claim 19, the Examiner refers to “Inomata.” Ans. 4. However,
“Inomata” is not identified in the statement of the rejection. We understand the
Examiner to be referring to Smolik.
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Application 14/045,129
have efficacy” in Smolik’s material. Final 4. Moreover, as discussed above,
Appellants have failed to show that the radiopaque polymeric article and full body
suit disclosed in DeMeo are required “in order for the ceramic nanoparticles of
DeMeo to have efficacy” in Smolik’s material. Final 3; see also Ans. 10.
Appellants have not demonstrated reversible error in the Examiner’s
conclusion of obviousness. Therefore, the § 103(a) rejection of claim 19 over the
combination of Smolik, Ehud, and DeMeo is sustained.
C. DECISION
The decision of the Examiner 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)(1).
AFFIRMED
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