Ex Parte Eckardt et alDownload PDFPatent Trial and Appeal BoardMay 31, 201813217323 (P.T.A.B. May. 31, 2018) Copy Citation UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 13/217,323 08/25/2011 24131 7590 06/04/2018 LERNER GREENBERG STEMER LLP PO BOX 2480 HOLLYWOOD, FL 33022-2480 FIRST NAMED INVENTOR BERND ECKARDT 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. TW-0518 5823 EXAMINER BURKE, SEAN P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 06/04/2018 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): boxoa@patentusa.com docket@patentusa.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERND ECKARDT, NORBERT LOSCH, and CARSTEN P ASLER Appeal2016-002270 Application 13/217 ,323 Technology Center 3600 Before JENNIFERD. BAHR, WILLIAM A. CAPP, and LEE L. STEPINA, Administrative Patent Judges. CAPP, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final rejection of claims 1-13 under 35 U.S.C. § 103(a) as unpatentable over Eckardt (WO 9,016,071, pub. Dec. 27, 1990). We have jurisdiction under 35 U.S.C. § 6(b). 2 We REVERSE. 1 Appellants identify Areva NP GmbH as the real-party-in-interest. Appeal Br. 1. 2 This case came before the Board on regularly scheduled oral hearing on May 22, 2018. Appeal 2016-002270 Application 13/217,323 THE INVENTION Appellants' invention relates to pressure relief of a nuclear power plant. Spec. ,r 2. Claim 1, reproduced below, is illustrative of the subject matter on appeal. 1. A method for pressure relief of a nuclear power plant having a containment for enclosing activity carriers and an outlet for a relief flow, which comprises the steps of: guiding the relief flow out of the containment into an atmosphere via a relief line provided with a filter system, the filter system having a filter chamber with a filter-chamber inlet, a filter-chamber outlet and a sorbent filter disposed there between; guiding the relief flow through a high-pressure section of the relief line where the relief flow moves adjacent too but not through the filter chamber, with the filter chamber being heated by way of heat transfer from the relief flow, and the relief flow being expanded at an end of the high-pressure section at a throttle and dried resulting in a low-pressure relief flow in comparison to the relief flow in the high-pressure section; guiding the low-pressure relief flow through a bed filter selected from the group consisting of a sand-bed filter and a gravel-bed filter; guiding the low-pressure relief flow through a superheating section surrounded by the high-pressure section of the relief line, the superheating section being in thermal interaction with the relief flow in the high-pressure section via heat-exchanger elements resulting in heating of the low-pressure relief flow by way of heat transfer from the high-pressure section; guiding the low-pressure relief flow directly thereafter through the filter chamber having the sorbent filter; and discharging the low-pressure relief flow into the atmosphere. 2 Appeal 2016-002270 Application 13/217,323 OPINION Claim 1 The Examiner finds that Eckardt discloses the invention substantially as claimed. Final Action 3--4. Appellants argue, among other things, that Eckardt' s throttle is downstream, rather than upstream, of the sand/gravel filter. Appeal Br. 6. In response, the Examiner concedes that Eckardt differs from the claimed invention in that the order of throttling and filtering the gas flow is reversed. Ans. 8. However, the Examiner takes the position that placing the pressure lowering throttle upstream or downstream of the sand/gravel filter is patentably insignificant. Id. at 7-8. According to the Examiner: Assuming arguendo that the drying/filtering step occurs at "high pressure," it unclear why doing the exact same operation at "low pressure" would be a nonobvious variation of the prior art. Id. at 8. The Examiner finds that Appellants' Specification lacks any teaching or other enabling disclosure that impacts the design of the sand/gravel filter so that it can accommodate high versus low pressure flow. Id. Appellants disclose and claim a throttle ( 40) that alters the flow out of external containment 4 from a high pressure flow (3 8) to a low pressure flow ( 42). Spec. ,r 85, Fig. 1. Throttle 40 is disposed upstream of sand/gravel filter 14. Id. at Fig. 1. Thus, the sand/gravel filter 14 filters the gas flow while in a low pressure state. Id. In contrast, Eckardt discloses throttle 26 that is disposed downstream of container 16 that contains filters 18 and 19. 3 3 Eckardt discloses sand and gravel filters. Eckardt, p. 1. There is no evidence in the record that details any structural difference between the sand/ gravel filter of Eckardt and the sand/ gravel filter of claim 1. 3 Appeal 2016-002270 Application 13/217,323 Eckardt, Fig. 1. 4 Thus, the gas flow that passes through filters 18 and 19 is high pressure flow. Id. The respective throttle locations in Eckardt and the instant invention constitute a difference between the prior art and the claimed invention. However, not every difference between the prior art and the claimed invention results in patentability. See CRFD Research, Inc. v. Mata!, 876 F.3d 1330, 1346 (Fed. Cir. 2017) (PTAB erred in failing to find obviousness over a single, non-anticipating reference). Nevertheless, we are not persuaded that the Examiner's analysis is sufficiently detailed and complete to support a conclusion that the claimed subject matter would have been obvious. Obviousness is a question of law based on underlying factual findings. Kinetic Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir. 2012). Claim 1 is a method claim. Claims App. The throttle serves to expand the flow, thereby reducing its pressure and humidity. Spec. 8. Altering the order of the throttling and filtering steps results in the gaseous stream that is filtered having different properties. Although the structure of the filter may be the same, the properties of the gas flow being filtered are different. Thus, relocating the filter to another location in the flow may affect the properties of the gas stream after it emerges from both the throttle and filter. The Examiner's underlying factual analysis fails to account for the effect on the gaseous flow of reversing the order of throttling and filtering. The Examiner's statement that it is "unclear" why doing the same operation at low pressure would be a nonobvious variation of the prior art is not 4 Throttle 26 is similarly located downstream of the metal fiber, aerosol filters in the embodiments disclosed in Figures 2, 3, and 5 of Eckardt. 4 Appeal 2016-002270 Application 13/217,323 sufficient for us to find that the Examiner's position is supported by a preponderance of the evidence. Ans. 8. Furthermore, the Examiner fails to provide a reason as to why a person of ordinary skill in the art would have reversed the order of the throttle and filter. A claimed invention may be obvious even when the prior art does not teach each claim limitation, so long as the record contains some reason why one of skill in the art would modify the prior art to obtain the claimed invention. Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1335 (Fed. Cir. 2016) (emphasis added). Moreover, "rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness." In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) cited with approval in KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,418 (2007). Here, the Examiner's rejection is deficient as it fails to articulate a reason, supported by rational underpinning, as to why a person of ordinary skill in the art would have modified Eckardt to achieve the claimed invention. In view of the foregoing discussion, we do not sustain the Examiner's unpatentability rejection of claim 1. Claim 2-13 Claim 2-13 depend from claim 1. The Examiner's rejection of these claims suffers from the same infirmity that was identified above with respect to claim 1. Thus, for essentially the same reason expressed above in connection with claim 1, we do not sustain the rejection of claims 2-13. 5 Appeal 2016-002270 Application 13/217,323 DECISION The decision of the Examiner to reject claims 1-13 is reversed. No time period for taking any subsequent action in connection with this appeal may be extended under 3 7 C.F .R. § 1.13 6( a )(1 )(iv). REVERSED 6 Copy with citationCopy as parenthetical citation