Ex Parte DIX et al

Board of Patent Appeals and Interferences

Jun 30, 2003

08976361 (B.P.A.I. Jun. 30, 2003)

1
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 48
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GARY E. DIX and BRUCE MATZNER
____________
Appeal No. 2002-2185
Application No. 08/976,361
____________
HEARD: MARCH 4, 2003
____________
Before COHEN, STAAB, and McQUADE, Administrative Patent Judges.
COHEN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 12, 14,
20, 23 through 25, 27, 31, and 34. Claims 15, 17, 19, 21, 22, 28,
29, 30, 32 and 33 stand withdrawn. These claims constitute all
of the claims remaining in the application.
Appellants’ invention pertains to a fuel bundle for a
nuclear reactor. A basic understanding of the invention can be
Appeal No. 2002-2185
Application 08/976,361
1 Our understanding of the Japanese documents is derived
from a reading of translations thereof prepared in the United
States Patent and Trademark Office. Copies of the respective
translations are appended to this opinion.
2
derived from a reading of exemplary claims 12 and 25, respective
copies of which are appended to the main brief (Paper No. 34).
As evidence of obviousness, the examiner has applied the
documents listed below:1
Johansson et al 5,229,068 Jul. 20, 1993
(Johansson)
Nishino 4-357494 Dec. 10, 1992
(Japan)(Japan ‘494)
Hatamiya et al 5-157867 Jun. 25, 1993
(Japan)(Japan ‘867)
The following rejections are before us for review.
Claims 12, 14, 20, 23 through 25, 27, 31, and 34 stand
rejected under 35 U.S.C. § 112, first paragraph, as lacking
descriptive support in the original disclosure.
Appeal No. 2002-2185
Application 08/976,361
3
Claims 12, 14, 20, 23 through 25, 27, 31, and 34 stand
rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite.
Claims 12, 14, 20, 23 through 25, 27, 31, and 34 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Japan ‘494 in view of Johansson.
Claims 12, 14, 20, 24, 25, 27, 31 and 34 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Japan ‘867
in view of either Johansson or Japan ‘494.
Claims 12, 14, 20, 23 through 25, 27, 31, and 34 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over
Japan ‘867 in view of either Johansson or Japan ‘494, as applied
to claims 12, 14, 20, 24, 25, 27, 31, and 34, further in view of
teachings of Johansson.
The full text of the examiner’s rejections and response to
the argument presented by appellants appears in the answer (Paper
No. 39), while the complete statement of appellants’ argument can
be found in the main and reply briefs (Paper Nos. 34 and 40).
Appeal No. 2002-2185
Application 08/976,361
2 In the copies of claims 12 and 23 appended to the main
brief, “360E” is an obvious error since these claims in the
application file specify “360
”.
3 In our evaluation of the applied prior art, we have
considered all of the disclosure of each document for what it
would have fairly taught one of ordinary skill in the art. See
In re Boe, 355 F.2d 961, 965, 148 USPQ 507, 510 (CCPA 1966).
Additionally, this panel of the board has taken into account not
only the specific teachings, but also the inferences which one
skilled in the art would reasonably have been expected to draw
from the disclosure. See In re Preda, 401 F.2d 825, 826, 159
USPQ 342, 344 (CCPA 1968).
4
OPINION
In reaching our conclusion on the issues raised in this
appeal, this panel of the board has carefully considered
appellants’ specification and claims,2 the applied teachings,3
the Declaration of Gary E. Dix executed Sept. 23, 1998, and the
respective viewpoints of appellants and the examiner. As a
consequence of our review, we make the determinations which
follow.
DESCRIPTION ISSUE
We sustain the rejection of claims 12, 14, 20, 23 through
25, 27, 31, and 34 under 35 U.S.C. § 112, first paragraph, as
lacking descriptive support in the original disclosure.
Appeal No. 2002-2185
Application 08/976,361
5
The test for determining compliance with the written
description requirement is whether the disclosure of the
application as originally filed reasonably conveys to the artisan
that the inventor had possession at that time of the later
claimed subject matter, rather than the presence or absence of
literal support in the specification for the claim language.
Further, the content of the drawings may also be considered in
determining compliance with the written description requirement.
See Vas-Cath Inc. v. Mahurkar, 935 F.2d 1555, 1562-63, 19 USPQ2d
1111, 1116 (Fed. Cir. 1991) and In re Kaslow, 707 F.2d 1366,
1375, 217 USPQ 1089, 1096 (Fed. Cir. 1983).
In the examiner’s view (answer, page 4), there is no support
in the original disclosure for an opening in the spacer having a
“substantially unobstructed” flow area (independent claim 12) and
for the recitation that the “flow area” is substantially as large
as each opening in the spacer without the fuel rod received
therethrough (independent claims 12 and 25). The examiner notes
(answer, page 5) that appellants amended the specification at
pages 3 and 12 to provide support for the above respective
matters. Additionally, it is the examiner’s position that the
Appeal No. 2002-2185
Application 08/976,361
6
original disclosure does not support the recitation that the
separation device includes a swirler (independent claims 12 and
25).
Based upon the original, unamended disclosure, it is quite
clear to us that one skilled in the art would appreciate that in
the absence of a full-length rod, a spacer opening would be
unobstructed. The amended recitations in the claims respectively
reciting “substantially unobstructed” flow area and
“substantially as large” are therefore determined to lack
descriptive support in the specification, as filed. As to the
claim recitation that the separation device includes a swirler,
we share appellants’ point of view (main brief, page 10) that the
disclosure provides support therefor, e.g., augers, vanes, and a
removable central shaft or other structural support for
separation devices (swirlers) are disclosed (specification, page
17).
For the reasons set forth above, we are not in accord with
appellants’ view (main brief, pages 7 and 8, and reply brief,
pages 1 and 2) that, from the written specification (page 3,
lines 22 through 27), those skilled in the art would recognize
Appeal No. 2002-2185
Application 08/976,361
7
that in the absence of a fuel rod in a spacer opening, the flow
area through that opening is substantially unobstructed, as shown
in Fig. 2. Further, we likewise do not agree with appellants’
explanation (main brief, page 8) that the inclusion of a full-
length rod obstructs flow through an opening and without the rod
the spacer opening is not obstructed, and thus “the
characterization of such spacer opening as having a substantially
unobstructed flow area therethrough is disclosed in the original
specification.”
INDEFINITENESS ISSUE
We sustain the rejection of claims 12, 14, 20, 23 through
25, 27, 31, and 34 under 35 U.S.C. § 112, second paragraph, as
being indefinite.
In assessing the indefiniteness issue raised in this appeal,
we keep in mind the following principles. Relative to the
requirements of 35 U.S.C. § 112, second paragraph, the court in
In re Hammack, 427 F.2d 1378, 1382, 166 USPQ 204, 208 (CCPA 1970)
stated that
Appeal No. 2002-2185
Application 08/976,361
8
[i]ts purpose is to provide those who would
endeavor, in future enterprise, to approach
the area circumscribed by the claims of a
patent, with the adequate notice demanded by
due process of law, so that they may more
readily and accurately determine the
boundaries of protection involved and
evaluate the possibility of infringement and
dominance.
Additionally, claims are considered to be definite, as required
by the second paragraph of 35 U.S.C. § 112, when they define the
metes and bounds of a claimed invention with a reasonable degree
of precision and particularity. See In re Venezia, 530 F.2d 956,
958, 189 USPQ 149, 151 (CCPA 1976).
As explained by the examiner (answer, pages 7 through 9), it
is not clear what is meant and encompassed by the claim language
“substantially unobstructed flow area” and a flow area
“substantially as large” as each flow area through the openings
without the fuel rod received therethrough.
From our perspective, the underlying disclosure provides no
explanation or guidelines whatsoever that would enable one
skilled in the art to gain an understanding of what would be a
“substantially unobstructed” flow area, and what flow area would
Appeal No. 2002-2185
Application 08/976,361
9
be “substantially as large”, as claimed. Thus, we determine that
the examiner’s conclusion of indefiniteness is sound.
For the reasons articulated above, the arguments of
appellants (main brief, pages 12 and 13) fail to convince us that
the limitations at issue are definite in meaning.

OBVIOUSNESS ISSUES
We do not sustain the rejection of claims 12, 14, 20, 23
through 25, 27, 31, and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Japan ‘494 in view of Johansson.
While we fully comprehend both the examiner’s and
appellants’ assessment of the Japan ‘494 reference, a reading of
the translation of this foreign language document makes it
apparent to us that the disclosure thereof is uncertain in
meaning. The reference sets forth that a plate-shaped blade is
provided on the top surface of a lattice 10 so as to reduce a
spacer cell C in diameter, which cell has no fuel rod inserted
therein. Thus, on the one hand, the blade is indicated to be on
the top surface of the lattice (the inference being that there is
Appeal No. 2002-2185
Application 08/976,361
10
no substantially obstructed flow area in the cell opening).
However, the translation also specifies a reduction in spacer
cell diameter (the inference being that there is an obstruction
in the cell opening). These apparent inconsistencies leave us
without any clear and unambiguous understanding of the teaching
of the Japan ‘494. Accordingly, it is speculative as to what in
fact Japan ‘494 teaches. For this reason, there is no certainty
as to what a modification of the Japan ‘494 fuel assembly would
yield when Japan ‘494 is considered with the swirler teaching of
Johansson. For the above reasons, the rejection cannot be
sustained.
We do not sustain the rejection of claims 12, 14, 20, 24,
25, 27, 31 and 34 under 35 U.S.C. § 103(a) as being unpatentable
over Japan ‘867 in view of either Johansson or Japan ‘494
Nishino).
The Japan ‘867 reference discloses (translation, page 14)
embodiments of a fuel assembly including partially long fuel rods
with structure for promoting circling flow. In Fig. 11, spiral
plate material is installed at the upper end of the partially
long fuel rods, while in Fig. 12 a circular tube is installed at
Appeal No. 2002-2185
Application 08/976,361
11
the upper end of three partially long fuel rods. The examiner
proposes to alter the fuel assembly of Japan ‘867 (Fig. 12) based
upon the teaching of either Johansson or Japan ‘494 (answer,
pages 14 through 16). We earlier recognized the teaching of
Japan ‘867 as speculative. Simply stated, we are in basic
agreement with appellants that, absent knowledge of the claimed
invention, the applied teachings themselves simply would not have
suggested to one having ordinary skill in the art a significant
modification of the fuel assembly of Japan ‘867 so as to yield
the particular fuel bundle now claimed.

We do not sustain the rejection of claims 12, 14, 20, 23
through 25, 27, 31, and 34 under 35 U.S.C. § 103(a) as being
unpatentable over Japan ‘867 in view of either Johansson or Japan
‘494, as applied to claims 12, 14, 20, 24, 25, 27, 31, and 34,
further in view of teachings of Johansson.
In this rejection, the examiner applies the same art as in
the preceding rejection. For the same reasons articulated above,
it is the opinion of this panel of the Board that the references
Appeal No. 2002-2185
Application 08/976,361
12
themselves would not have been suggestive of the specific subject
matter of appellants’ claims to one having ordinary skill in the
art.
In summary, this panel of the board has affirmed the
respective rejections under 35 U.S.C. § 112, first and second
paragraphs, but has reversed each of the obviousness rejections
on appeal.
The decision of the examiner is affirmed.
Appeal No. 2002-2185
Application 08/976,361
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No time period for taking any subsequent action in
connection with this appeal may be extended under 37 CFR
§ 1.136(a).
AFFIRMED
IRWIN CHARLES COHEN )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
LAWRENCE J. STAAB ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JOHN P. McQUADE )
Administrative Patent Judge )
ICC:pgg
Appeal No. 2002-2185
Application 08/976,361
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