Ex Parte Doudoux et al

Patent Trial and Appeal Board

Jul 27, 2017

13121917 (P.T.A.B. Jul. 27, 2017)

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.
13/121,917 06/02/2011 Jean-Luc Doudoux 11000568.1031 3035
23280 7590 07/31/2017
Davidson, Davidson & Kappel, LLC
589 8th Avenue
16th Floor
New York, NY 10018
EXAMINER
DAVIS, SHARON M
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
07/31/2017 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):
ddk @ ddkpatent .com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JEAN-LUC DOUDOUX, ERIC GALBAN,
YVES CHARBONNIER, JEROME BOUSSIN, MATTHIEU PONCE,
JAN PATRICE SIMONEAU, JORG PEUCKER, HOLGER SCHMIDT, and
KLAUS L. NISSEN
Appeal 2015-008100
Application 13/121,917
Technology Center 3600
Before HUBERT C. LORIN, BRUCE T. WIEDER, and AMEE A. SHAH,
Administrative Patent Judges.
SHAH, Administrative Patent Judge.
DECISION ON APPEAL1
The Appellants2 appeal under 35 U.S.C. § 134(a) from the Examiner’s
final decision rejecting claims 31—36 and 41—49. We have jurisdiction under
35 U.S.C. § 6(b). We AFFIRM IN PART.
1 Throughout this opinion, we refer to the Appellants’ Appeal Brief
(“Appeal Br.,” filed Mar. 16, 2015), Reply Brief (“Reply Br.,” filed Sept. 1,
2015), and Specification (“Spec.,” filed Mar. 30, 2011), and to the
Examiner’s Answer (“Ans.,” mailed July 1, 2015) and Final Office Action
(“Final Act.,” mailed Sept. 18, 2014).
2 According to the Appellants, the real party in interest is AREVA NP.
Appeal Br. 2.
Appeal 2015-008100
Application 13/121,917
STATEMENT OF THE CASE
The Appellants’ “invention relates to a cladding tube for nuclear fuel
rod, made from metal.” Spec. 1:3—4.
Claims 31 and 49 are the independent claims on appeal. Claim 31 is
illustrative of the subject matter on appeal and is reproduced below (with
bracketing added for reference):
31. A method of manufacture by pilgrim rolling of a metal
nuclear fuel rod cladding tube from a tubular blank, the method
comprising the following steps:
[(a)] progressively elongating a blank by rolling between
a mandrel inserted inside the blank and two dies disposed about
the mandrel;
[(b)] reciprocally moving the two dies along the mandrel;
and
[(c)] advancing the blank along the mandrel between
reciprocating movements of the dies,
[(d)] wherein dimples are punched into an external surface
of the blank during the rolling of the blank.
Appeal Br., App. A.
THE REJECTION ON APPEAL
Claims 31—36 and 41—49 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Gille (US 2,703,999, iss. Mar. 15, 1955) and Huet
(US 3,154,141, iss. Oct. 27, 1964). Final Act. 5.
2
Appeal 2015-008100
Application 13/121,917
ANALYSIS
Claims 31—36, 41—43. 48-
The Appellants contend that the Examiner’s rejection of claim 31 is in
error because “Gille and Huet do not render obvious [the] ‘method of
manufacture by pilgrim rolling of a metal nuclear fuel rod cladding tube
from a tubular blank’ as recited in claim 31Appeal Br. 5. The Appellants
also contend that the Examiner’s rejection is in error because “Gille and
Huet do not render obvious ‘wherein dimples are punched into an external
surface of the blank during the rolling El as recited in claim 31.” Id. at 1.
The Appellants further contend that the Examiner’s rejection is in error
because the Examiner’s reasoning for combining the prior art is “conclusory
and lacks a rationale underpinning or factual basis.” Id.', see also Reply
Br. 3.
After careful review of the Appellants’ arguments as presented in the
Appeal and Reply Briefs, we are not persuaded of error on the part of the
Examiner in the rejection of claim 31.
The Examiner finds that Gille discloses the method of claim 31 of
manufacturing a nuclear metal rod by pilgrim rolling comprising the steps of
elongating a blank, moving the two dies, and advancing the blank, as recited
in limitations (a), (b), and (c), respectively. Final Act. 5. The Examiner
acknowledges that Gille does not disclose forming dimples, as recited in
limitation (d), but relies on Huet for teaching this limitation. Id. The
Examiner determines that one of ordinary skill in the art would combine
forming dimples as taught by Huet with the method of Gille to “have more
3 The claims are addressed in the order argued by the Appellants in the
Appeal Brief.
3
Appeal 2015-008100
Application 13/121,917
efficient heat exchange properties as a function of [a tube’s] increased
surface area.” Id. (citing Huet, col. 1,11. 9-14).
Gille discloses a pilgrim rolling mill used to produce tubes whereby a
stand supports a roll carriage adapted to be moved on rollers. Gille, col. 1,
11. 23—25, 77—79. A crank disk imparts reciprocating movement to a carriage
in which two roll journals are mounted; the roll journals are provided with
detachable dies 30 in which grooves are formed. Id. col. 1,1. 79-col. 2,1. 5.
In the grip of the working grooves is a blank 35 under reduction. Id. col. 2,
11. 15—17. Inside the blank 35 is a mandrel 36. Id. col. 2,11. 17—21. The
surfaces of the mandrel head and the working grooves cooperate to form an
annular space so that the tube worked upon is reduced or squeezed. Id.
col. 2,11. 21—29. Huet discloses a tube “having rough excrescences and
indentations or depressions of various shapes and orientations, arranged
irregularly and symmetrically or asymmetrically.” Huet, col. 1,11. 24—27.
These excrescences are formed by depressions in an initially smooth tube
surface by having rough excrescences formed on the rollers through which a
metallic tube passes. Id. col. 1,11. 39-46.
We find unpersuasive the Appellants’ argument that neither Gille nor
Huet teaches rolling of a metal nuclear fuel rod cladding tube. See Appeal
Br. 5—6. The Examiner relies on the combination of Gille and Huet for
teaching the claimed method. In particular, the Examiner relies on Gille for
teaching rolling a tube and on Huet for the tube being a metal heat exchange
tube. See Ans. 8—9. We find unpersuasive the Appellants’ argument that
Huet does not teach the tube being metal but instead teaches “the practicality
of using ceramic material for heat exchange tubes.” Appeal Br. 6. Huet
specifically discloses using a metallic tube passing through rollers and on
4
Appeal 2015-008100
Application 13/121,917
which holes or grooves of any shape are produced. Huet, col. 1,11. 42-46.
Although Huet discloses that the invention “can also apply to tubes of any
other nature, for example of ceramic material” and “to the surfaces of fuel
elements of nuclear reactors” {id. at col. 2,11. 48—56), it is clear that Huet
still contemplates forming metallic tubes.
We further find unpersuasive the Appellants’ argument that the tubes
formed by the process of Gille and Huet are not nuclear fuel cladding tubes.
See Appeal Br. 6—7. The Examiner affords the structural terms “metal” and
“tube” of the preamble patentable weight, but finds that the terms “nuclear
fuel cladding” in describing the type of tube are not afforded patentable
weight as they merely describe the function of the tube created by the
process claimed. Ans. 8. We agree. The Appellants have not shown that
the steps of the claimed method would be performed differently for a metal
tube used as a heat exchanger than for a metal tube used for nuclear fuel
cladding. As such, we find supported the Examiner’s finding that the
process taught by the combination of Gille and Huet of forming a metal tube
can be used to form a nuclear fuel cladding tube as recited in the preamble of
the claim. See id.
We also find unpersuasive the Appellants’ arguments that Gille and
Huet do not teach “wherein dimples are punched into an external surface of
the blank during the rolling,” as recited in limitation (d) of claim 31. Appeal
Br. 7—9; Reply Br. 2. We find the arguments unpersuasive at least because
they are arguments against the art individually when the Examiner relies on
a combination of the references to teach the limitation. The test for
obviousness is not what any one reference would have suggested, but rather
what the combined teachings of the references would have suggested to
5
Appeal 2015-008100
Application 13/121,917
those of ordinary skill in the art. See In re Keller, 642 F.2d 413, 426 (CCPA
1981). “[0]ne cannot show non-obviousness by attacking references
individually were, as here, the rejections are based on combinations of the
references.” Id. (citation omitted). Here, the Examiner relies on Gille to
teach pilgrim rolling a blank and on Huet for teaching punching dimples into
the surface of a blank during rolling. See Final Act. 5; Ans. 9-10. The
Appellants’ arguments that Huet does not teach elongating the blank
(Appeal Br. 7) or pilgrim rolling (Reply Br. 2), is not persuasive because the
Examiner relies on Gille for those teachings. The Appellants do not provide
sufficient evidence or technical reasoning to rebut the Examiner’s findings
that Gille teaches elongating a blank and pilgrim rolling (Final Act. 5) and
that Huet teaches punching holes into the surface of the blank during rolling
of the tube (id.; see also Huet, col. 1,11. 42-46). We note that the Appellants
(and the Specification) do not provide a specific definition for “pilgrim
rolling,” but that the Office considers pilgrim rolling to be the “reciprocation
of tubular work through a stationary roll stand or reciprocation of a rolling
stand over a tube.” USPTO Cooperative Patent Classification B21B 21/00,
https://www.uspto.gov/web/patents/classification/cpc/html/defB21B.html
(retrieved July 17, 2017). As such, we agree with the Examiner that Huet’s
manufacturing of a tube via rolling encompasses manufacturing via pilgrim
rolling. See Ans. 10.
We further find unpersuasive the arguments that Gille and Huet do not
teach punching dimples as claimed because the Examiner’s rejection is not
based upon a bodily incorporation of Huet’s method system into Gille’s
method. See In re Keller, 642 F.2d at 425. “The test for obviousness is not
whether the features of a secondary reference may be bodily incorporated
6
Appeal 2015-008100
Application 13/121,917
into the structure of the primary reference.” Id. The Examiner modifies the
roller of Gille, used to squeeze the blank into a tube, to have Eluef s rough
excrescences to produce holes, i.e. punch dimples, into the tube. See Ans. 9.
The Appellants do not provide adequate evidence or technical reasoning that
the proposed modification would have been beyond the capabilities of one of
ordinary skill in the art.
Finally, we find unpersuasive the Appellants’ arguments that the
Examiner’s reasoning is “conclusory,” “lacks a factual basis,” and “is based
on speculation, unfounded assumptions and hindsight reconstruction.”
Appeal Br. 7—8; see also Reply Br. 2—3. The Examiner cites to Huet in
reasoning that modifying the roller of Gille to have excrescences to punch
dimples as taught by Huet would provide more efficient heat exchange
properties. Final Act. 5. We note that Huet specifically discloses forming
hollows, i.e., dimples, into tubes “with a view to increasing the surface of
the tube for the exchange of heat.” Huet, col. 1,11. 9-15. The Appellants do
not provide adequate evidence or technical reasoning why this articulated
reasoning is incorrect or insufficient to support the conclusion of
obviousness. As discussed above, we find supported the Examiner’s
findings regarding the teachings of Gille and Huet. Further, we find
reasonable the Examiner’s reasoning, based on Huet, for incorporating
dimples into the surface of a tube.
For at least the above reasons, we are not persuaded of error on the
part of the Examiner in the rejection of claim 31 under 35 U.S.C. § 103(a).
Thus, we sustain this rejection of independent claim 31 and its dependents
claims 32—36 and 41—43, which the Appellants do not separately argue. See
Appeal Br. 9.
7
Appeal 2015-008100
Application 13/121,917
Claim 49
Claim 49 recites the same limitations as claim 31, but incudes an
additional limitation of “the dimples having a thickness between 10% to
60% of the total thickness of the tube.” Appeal Br., App. A. The Appellants
contend that the Examiner’s rejection of independent claim 49 is in error for
the same reasons the rejection of claim 31 is in error. Appeal Br. 9. For the
same reasons we find the arguments regarding claim 31 unpersuasive, we
find them unpersuasive here as well.
The Appellants further contend the Examiner’s rejection of claim 49
is in error because Huet and Gille do not render obvious the additional
limitation of the required thickness of the dimples. Appeal Br. 9.
The Examiner finds, in particular, that Huet teaches forming dimples
of at least one-tenth of a millimeter, and that the dimple thickness is
“selected as a function of the nature and conditions of temperature and
pressure of the fluids with which the tube is in contact.” Final Act. 9
(quoting Huet, col. 1,11. 28—35). The Examiner finds that “Huet establishes
that the depth of the dimples is result-effective variable,” and thus, “it is not
inventive to discover the optimum or workable ranges by routine
experimentation.” Id. (citing In reAller, 220 F.2d 454, 456 (CCPA 1955).
The Examiner determines that
One of ordinary skill in the art at the time of the invention would
have found it obvious to optimize the depth of the dimples to
10% to 60% of the total thickness of the tube based on the desired
heat exchange and strength properties required by the intended
use of the metal tube formed by the method of Huet combined
with Gilles.
Id.
8
Appeal 2015-008100
Application 13/121,917
At the outset, we note that the discovery of an optimum value of a
result effective variable is ordinarily within the skill of the art. See In re
Boesch, 617 F.2d 272, 276 (CCPA 1980); In re Applied Materials, Inc., 692
F.3d 1289, 1297 (Fed. Cir. 2012); Aller, 220 F.2d at 456. Notably, Aller
established two conditions for a conclusion of obviousness: one, the general
conditions of the claim must be disclosed in the prior art; and two, discovery
of the optimum value or workable range must be a matter of routine
experimentation for a person of ordinary skill in the art. See Aller, 220 F.2d
at 456.
Here, the Examiner finds that Huet discloses the general condition of
a depth of dimple, the first condition of Aller. Final Act. 9. The Examiner
then addresses the second condition of Aller that the discovery of the
optimum value or workable range of the depth of the dimple would be a
matter of routing experimentation in that Huet teaches the depth selected as
a function of the temperature and fluids within which the tube is in contact.
Id.
We find unpersuasive the Appellants’ argument that the claimed depth
was an unexpected result, i.e., not a matter of routine experimentation, in
that one of ordinary skill in the art would have been lead away from “any
depression having a depth superior to 10% of the cladding tube thickness in
a nuclear fuel rod cladding tube made from metal.” Appeal Br. 10; see also
Reply Br. 4—6. The Appellants cite to references4 that discuss that the “basic
design rule of wear of less than of 10% of cladding thickness” {id.), but do
not provide adequate evidence or technical reasoning why it would have
4 We note that the Appellants did not submit any of the cited references as
evidence relied upon in the appeal. See App. B.
9
Appeal 2015-008100
Application 13/121,917
been unexpected to have the depth of a dimple in a metal cladding tube be
greater than 10% of the thickness. In other words, the references state that
the wear should not be greater than 10% of the original thickness of a tube,
which would take into account a purposefully formed dimple {id.), but not
that the thickness of a dimple should not be greater than 10% of the original
thickness of a tube without a dimple (see Ans. 11). Further, the Appellants’
argument that Byers is distinct from the range claimed {see Reply Br. 5—6) is
unpersuasive because it mischaracterizes the Examiner’s reliance on Byers.
The Examiner cites to Byers as evidence that “purposefully forming a
texture on the surface of a nuclear fuel cladding cannot be considered
‘wear.’” Ans. 11. The Appellants’ arguments regarding Byers’s maximum
size for surface defect and lack of specificity of rugosity (Reply Br. 6) do not
explain why the Examiner’s finding, that forming a texture is not wear, is
incorrect.
Based on the foregoing, we are not persuaded of error on the part of
the Examiner in the rejection of independent claim 49, and we sustain the
rejection of claim 49 under 35 U.S.C. § 103(a).
Claim 44
The Appellants contend that the Examiner’s rejection of claim 44 is in
error because Gille does not disclose pivoting the blank about a center axis
of the mandrel, as recited by the claim. Appeal Br. 11—12.
The Examiner finds that Gille discloses this limitation at column 1,
line 76 through column 2, line 14 (Final Act. 7) and at column 3, lines 37—45
in describing the “usual means” for turning the blank together with the
mandrel to produce a tube, as opposed to a flat sheet (Ans. 12).
10
Appeal 2015-008100
Application 13/121,917
However, we find persuasive the Appellants’ argument that the cited
portions of Gille do not disclose pivoting the blank about the axis in that, in
Gille, the tube can be formed without pivoting the blank. See Reply Br. 7;
see also Appeal Br. 11—12.
Thus, we are persuaded of error on the part of the Examiner in the
rejection of dependent claim 44, and we do not sustain the rejection of
claim 44 under 35 U.S.C. § 103(a).
Claim 45
The Appellants contend that the Examiner’s rejection of claim 45 is in
error because Huet does not disclose one of the dies having a punch
punching the dimples into the external surface of the blank, as recited by the
claim. Appeal Br. 12.
The Examiner relies on the combination of Gille and Huet for
disclosing this limitation. Specifically, the Examiner modifies Gille’s dies
to have Huet’s rough excrescences that produce grooves, i.e., punches
dimples. Ans. 12; Final Act. 7 (citing Huet, col. 1,11. 47—51).
We find unpersuasive the Appellants’ argument that the excrescences
of Huet are not “punches.” Appeal Br. 12. The Appellants’ statement is not
supported by adequate evidence or technical reasoning why the excrescences
of Huet that form grooves, i.e., dimples, are not punches.
Therefore, we are not persuaded of error on the part of the Examiner
in the rejection of dependent claims 45, and we sustain the rejection of
claim 45 under 35 U.S.C. § 103(a).
Claims 46 and 47
The Appellants contend that the Examiner’s rejection of claims 46 and
47, which depends from claim 46, is in error because Gille and Huet do not
11
Appeal 2015-008100
Application 13/121,917
disclose each die having a groove with a punch disposed at a base of the
groove, as recited by claim 46. Appeal Br. 12—13.
The Examiner relies on the combination of Gille and Huet for
disclosing this limitation. Specifically, the Examiner finds Gille teaches the
die having a peripheral groove as claimed (Final Act. 7) and that the rough
excrescences of Huet, i.e., the punches, “incorporated onto the dies of Gilles
would necessarily be disposed as claimed because it is this . . . portion of the
die that contacts the blank as it is being rolled.” Ans. 12—13; see also Final
Act. 7. The Examiner further finds that “the punch would have to be placed
at the base of the grove to create dimples in the blank as it is being rolled.”
Final Act. 7; Ans. 13.
We find persuasive the Appellants’ argument that Gille and Huet do
not teach that a location for the punch is at the base of the groove. Appeal
Br. 13. The Examiner does not provide adequate support for the finding that
the punch “would necessarily be disposed” at the base. To the extent the
Examiner relies on the location of the punch at the base being inherent, we
note that “[ijnherency, 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.” Hansgirg v. Kemmer, 102 F.2d 212, 214
(CCPA 1939), quoted in Continental Can Co. USA v. Monsanto Co., 948
F.2d 1264, 1269 (Fed. Cir. 1991).
Therefore, we are persuaded of error on the part of the Examiner in
the rejection of dependent claims 46 and 47, and we do not sustain the
rejection of claims 46 and 47 under 35 U.S.C. § 103(a).
12
Appeal 2015-008100
Application 13/121,917
DECISION
The Examiner’s rejection of claims 31—36, 41—43, and 45 under
35 U.S.C. § 103(a) is AFFIRMED.
The Examiner’s rejection of claims 44, 46, and 47 under
35 U.S.C. § 103(a) is REVERSED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l)(iv).
AFFIRMED-IN-PART
13