Ex Parte Connor et al

Patent Trial and Appeal Board

Apr 18, 2016

13528557 (P.T.A.B. Apr. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/528,557 06/20/2012
26353 7590 04/20/2016
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
William Connor
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.
NSD2006-009 DIV 3259
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
04/20/2016 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):
guerral@westinghouse.com
spadacjc@westinghouse.com
coldrerj@westinghouse.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLIAM CONNOR and RACHEL DEVITO 1
Appeal 2014-003600
Application 13/528,557
Technology Center 3600
Before WILLIAM A. CAPP, BRANDON J. WARNER, and
AMANDA F. WIEKER, Administrative Patent Judges.
WIEKER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
William Connor and Rachel De Vito ("Appellants") appeal under 3 5
U.S.C. § 134(a) from the Examiner's final rejection of claims 1--4 and 8-
14.2 We have jurisdiction over the appeal under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION under
37 C.F.R. § 41.50(b).
1 According to Appellants, the Real Party in Interest is Westinghouse
Electric Company LLC. Appeal Br. 2.
2 Claims 5-7 and 15 have been cancelled. Id.
Appeal2014-003600
Application 13/528,557
CLAIMED SUBJECT MATTER
The invention concerns an organic compound added to coolant water
in a pressurized water reactor. See Spec. i-f 1. Claims 1 and 9 are illustrative
of the subject matter on appeal, and recite:
1. A nuclear reactor having a reactor coolant system,
the reactor coolant system contains reactor coolant circulating
therethrough, and an organic additive is present in the reactor
coolant in an amount sufficient to produce elemental carbon,
the organic additive is selected from the group consisting of
elements of carbon and hydrogen,
elements of carbon, hydrogen and nitrogen,
elements of carbon, hydrogen and oxygen, and
elements of carbon, hydrogen, nitrogen and oxygen,
wherein the reactor coolant excludes the presence of inorganic
compounds with the exception of a sufficient amount of boric
acid to control reactivity, hydrogen to provide reducing
conditions, an additive to maintain [pH] in a target control
band and trace elements naturally occurring in water.
9. An organic additive for reactor coolant in a
primary circuit of a nuclear reactor, consisting of
elements of carbon and hydrogen,
elements of carbon, hydrogen and nitrogen,
elements of carbon, hydrogen and oxygen, and
elements of carbon, hydrogen, nitrogen and oxygen,
wherein the reactor coolant excludes the presence of inorganic
compounds with the exception of a sufficient amount of boric
acid to control reactivity, hydrogen to provide reducing
conditions, an additive to maintain [pH] in a target control
band and trace elements naturally occurring in water, and
wherein the organic additive is present in the reactor coolant in
an amount sufficient to produce elemental carbon.
2
Appeal2014-003600
Application 13/528,557
Appeal Br. 8-9, Claims App. (emphases added). 3
REJECTION
Claims 1--4 and 8-14 stand rejected under 35 U.S.C. § 102(b) as
anticipated by Andresen (US 2002/0080906 Al, pub. June 27, 2002).
ANALYSIS
Anticipation by Andresen - Claims 1-4 and 8-14
The Examiner finds that Andresen discloses a nuclear reactor coolant
with an organic additive selected from the claimed group. Final Act. 8-9
(citing Andresen i-f 39). The cited portion of Andresen discloses that a noble
metal, such as platinum, is injected into a pressurized water reactor in the
form of an aqueous solution or suspension with, e.g., carboxylic acids.
Andresen i-f 39. The Examiner also finds that the reactor coolant excludes
the presence of inorganic compounds with the exception of, inter alia, an
additive to maintain pH in a target control band. Final Act. 9 (citing
Andresen i-f 54). Specifically, the Examiner finds that the platinum
introduced into the reactor is an additive to maintain pH in a target control
band, as claimed. Ans. 6-7 (citing Andresen i-fi-1 11, 44 ).
3 The Examiner's Advisory Action (dated August 1, 2013) indicates, in
contradicting fashion, that proposed amendments (dated July 19, 2013)
submitted after the Final Office Action both "will not be entered" and "will
be entered" for purposes of the present appeal. Adv. Act. 1. Given the
Examiner's treatment of claims 5 and 15 as cancelled, consistent with the
proposed amendment, (Adv. Act. 1 (Status of Claims); Ans. 5), we consider
the claims as Appellants present them in the Claims Appendix of the Appeal
Brief.
3
Appeal2014-003600
Application 13/528,557
Appellants contend that the inclusion of a metal compound, e.g.,
platinum, in Andresen's additive violates the closed Markush language of
Appellants' claim 1 ("selected from the group consisting of: [A], [BJ, [CJ,
and [D]"). Appeal Br. 4--5. Appellants contend that the claimed Markush
group does not "recite[] any alternatively useable species that include a
metal compound." Id. at 5. Appellants also argue that Andresen does not
disclose that "the platinum group metal [is added] to achieve a particular pH
value or pH range." Reply Br. 3 (disputing the Examiner's citations to
Andresen i-fi-f 11, 44).
We agree with Appellants. Andresen discloses a reactor coolant
additive that includes a metal compound, such as platinum. See Andresen
i-fi-135, 39. The inclusion of a metal in the claimed organic additive is not
contemplated by the Markush grouping, which utilizes closed, exclusive
language. Further, a preponderance of the evidence does not support the
Examiner's finding that the added metal compound is included to maintain
pH in a target control band. We have reviewed the portions of Andresen
cited by the Examiner and we fail to see, and the Examiner has not explained
adequately, how the cited portions of Andresen disclose that the added metal
compound maintains pH in a target control band. To the contrary,
Andresen's paragraph 11 does not disclose pH ranges at all, and Andresen's
paragraph 44 discloses only that pH decreases at higher operating
temperatures. Andresen i-fi-f 11, 44. Neither portion of Andresen's disclosure
supports the finding that the disclosed metal compound is "an additive to
maintain pH," as claimed.
4
Appeal2014-003600
Application 13/528,557
Therefore, we reverse the Examiner's rejection of claim 1, and claims
2--4 and 8-14, all of which exclude the presence of a metal compound (with
certain exceptions), as discussed above. 4
New Ground of Rejection, 35 US.C. § 112, First Paragraph- Claims 9-14
Pursuant to our authority under 3 7 C.F .R. § 41. 50(b ), we enter the
following new ground of rejection. Claims 9-14 are rejected under 35
U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
As discussed above, claim 9 recites, in part:
9. An organic additive for reactor coolant in a
primary circuit of a nuclear reactor, consisting of
elements of carbon and hydrogen,
elements of carbon, hydrogen and nitrogen,
elements of carbon, hydrogen and oxygen, and
elements of carbon, hydrogen, nitrogen and oxygen ....
Appeal Br. 8-9, Claims App. (emphasis added); see supra n.4. As drafted,
this claim does not recite properly a Markush grouping, which requires the
format recited in claim 1, e.g., claiming that an element is "selected from the
group consisting of: [A], [BJ, [CJ, and [DJ." Instead, as drafted, claim 9
requires (redundantly) each of the elements recited in the claim.
4 We note that although independent claim 9 does not recite properly a
closed Markush group consisting of four organic additives, claim 9 does
"exclude[] the presence of inorganic compounds" with the exceptions
discussed above regarding claim 1. See Appeal Br. 8-9, Claims App.
Therefore, we reverse the rejection of claims 9-14 on the grounds that
Andresen includes a metal compound in violation of this clause, despite
failing to recite properly a closed Markush group.
5
Appeal2014-003600
Application 13/528,557
Appellants' Specification does not demonstrate possession of that
which is claimed, e.g., an organic additive consisting of each of the sets of
elements claimed. See Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d
1336, 1351 (Fed. Cir. 2010) (en bane) (citation omitted). Rather,
Appellants' Specification discloses only the use of an organic additive
consisting of any one claimed set of elements. See, e.g., Spec. i-f 26 ("[I]n
alternate embodiments, organic compounds for use in the present invention
can include those containing at least carbon and hydrogen, or at least carbon,
hydrogen, and oxygen, or at least carbon, hydrogen, and nitrogen, or at least
carbon, hydrogen, oxygen, and nitrogen.").
Therefore, we find that Appellants' Specification fails to demonstrate
that the inventor had possession of the claimed invention, and we reject
claim 9, and claims 10-14, which depend therefrom, under 35 U.S.C. § 112,
first paragraph.
DECISION
The rejection of claims 1--4 and 8-14 under 35 U.S.C. § 102(b) as
anticipated by Andresen is REVERSED.
We enter a NEW GROUND OF REJECTION of claims 9-14 under
35 U.S.C. § 112, first paragraph, as failing to comply with the written
description requirement.
FINALITY OF DECISION
This decision contains a new ground of rejection pursuant to 37 CPR
§ 41.50(b). 37 CPR§ 41.50(b) provides "[a] new ground of rejection
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Appeal2014-003600
Application 13/528,557
pursuant to this paragraph shall not be considered final for judicial review."
37 CPR§ 41.50(b) also provides that Appellant, WITHIN TWO MONTHS
FROM THE DATE OF THE DECISION, must exercise one of the
following two options with respect to the new ground 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).
REVERSED; 37 C.F.R. § 41.50(b)
7