Ex Parte Fraundorfer et al

Patent Trial and Appeal Board

Jun 25, 2013

11848394 (P.T.A.B. Jun. 25, 2013)

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.
11/848,394 08/31/2007 Franz Josef Fraundorfer MOH-P060040 3739
24131 7590 06/26/2013
LERNER GREENBERG STEMER LLP
P O BOX 2480
HOLLYWOOD, FL 33022-2480
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
06/26/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte FRANZ JOSEF FRAUNDORFER,
GREGOR MUNSTERJOHANN, and ERHARD FRIEDRICH
____________

Appeal 2011-004179
Application 11/848,394
Technology Center 3600
____________

Before GAY ANN SPAHN, MICHAEL C. ASTORINO, and
BENJAMIN D.M. WOOD, Administrative Patent Judges.

SPAHN, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Franz Josef Fraundorfer et al. (Appellants) seek our review under 35
U.S.C. § 134 of the Examiner’s rejection of claims 1 and 5-13. Appellants
cancelled claims 2-4. The Examiner withdrew claims 14-17 from
consideration. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.

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Application 11/848,394

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Claimed Subject Matter
The claimed subject matter relates to repair of a fuel assembly for a
light water reactor in which a replacement assembly is fastened above or
below the damaged region of a spacer with the aid of at least one connecting
part. Spec. 2-3, para. [0007]. Claim 1 (the sole independent claim),
reproduced below, with emphasis added, is representative of the appealed
subject matter.
1. A fuel assembly for a light water reactor, comprising:
a fuel rod cluster having fuel rods;
a spacer having webs defining a number of cells for
laterally holding said fuel rods, said spacer further including an
edge region having a damaged region with at least one damaged
cell;
at least one separate connecting part having a first end
and a second end; and
a replacement assembly being fastened selectively above
or below, said damaged region of said spacer having said at
least one damaged cell, with an aid of said at least one
connecting part, said spacer and said replacement assembly
each being respectively connected to said connection part in a
manner of a snap connection, said replacement assembly
having webs defining a number of replacement cells
corresponding to a number of said damaged cells, at least a
portion of said damaged cells being traversed by said fuel rods,
said first end of said connecting part engaging in said spacer
and said second end of said connecting part engaging in said
replacement assembly for connecting said replacement
assembly to said spacer;
said webs of said spacer and said replacement assembly
having end edges; and
said connecting part containing axially extending spring
tongues having latching projections each with a radial shoulder,
at least one of said axially extending spring tongues penetrating
a respective one of said cells of said spacer and at least another
of said spring tongues penetrating a respective one of said
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Application 11/848,394

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replacement cells of said replacement assembly, said axially
extending spring tongues bearing, at a free end protruding from
said respective cell and said respective replacement cell, one of
said latching projections, said latching projection engaging with
said radial shoulder behind a respective end edge facing said
latching projection.

Rejections
The following Examiner’s rejections, under 35 U.S.C. § 103(a), are
before us for review:
I. claims 1, 5-8, 10, and 11 as unpatentable over Gallacher1 (US
5,625,657, issued Apr. 29, 1997), Schreiber (US 4,155,807, issued May 22,
1979), Read (US 5,580,203, issued Dec. 3, 1996), and Poe (US 4,786,225,
issued Nov. 22, 1988);
II. claims 12 and 13 as unpatentable over Gallacher, Schreiber,
Read, Poe, and Hoffmann (US 4,988,474, issued Jan. 29, 1991); and
III. claim 9 as unpatentable over Gallacher, Schreiber, Read, Poe,
and Wollar (US 4,405,272, issued Sep. 20, 1983).

OPINION
Rejection I – Obviousness based on Gallacher, Schreiber, Read, and Poe
The Examiner finds that Gallacher teaches that spacer 18 and
replacement assembly 50 are connected to connecting parts 42, 44 (see figs.
2 and 4B), but fails to teach that either the spacer 18 or the replacement

1 In the Evidence Relied Upon and Grounds of Rejection sections on pages
3-16 of the Answer, the Examiner incorrectly refers to the primary reference
as “Gallaher”; however, we assume that the Examiner meant to refer to the
correct reference name of “Gallacher” as the Examiner did in the Response
to Argument section on pages 16-23 of the Answer.
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Application 11/848,394

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assembly 50 are connected to the connecting part “in the manner of a snap
connection” as required by claim 1; however, “Read et al. teach[] a
connecting part 21 that connects to a substrate in a manner of a snap
connection.” Ans. 5-6 (citing Read, col. 1, ll. 48-51, and fig. 2). The
Examiner concludes that it would have been obvious to one of ordinary skill
in the art “to connect the spacer [and the replacement assembly] to the
connecting part in the manner of a snap connection,” because “[a]
motivation for connecting the spacer [and the replacement assembly] to the
connecting part in a manner of a snap connection, as taught in Read et al., is
to provide a resilient connector which is configured such that it can be
inserted into openings (cells [and replacement cells]) of various sizes (i.e.[,]
if each cell[] does not have identical dimensions).” Ans. 6.
Appellants argue that “the cells present in a spacer, as disclosed by
Gallacher, are necessarily all of the same size since they serve for
accommodating fuel rods of the same size,” and since Gallacher discloses
cells of a same size so that cells of different sizes are not an issue in
Gallacher, “the Examiner’s allegation for modifying Gallacher based on
Read appears to be arbitrary and is not based on apparent reason.” App. Br.
17; see App. Br. 21-22. .
In response , the Examiner indicates “while Appellant[s] assert[] . . .
that the [E]xaminer is ‘making up’ a reason for combining the references,
the motivation to combine references may be found either in the references
themselves or in the knowledge generally available to one of ordinary skill
in the art.” Ans. 22. (citing In re Fine, 837 F.2d 1071 (Fed. Cir. 1988) and
In re Jones, 958 F.2d 347 (Fed. Cir. 1992)).
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We are persuaded by Appellants’ arguments, because the Examiner’s
reasoning for combining Gallacher and Read, i.e., to provide a resilient
connector which is configured such that it can be inserted into openings
(cells [and replacement cells]) of various sizes (i.e.[,] if each cell[] does not
have identical dimensions), lacks a rational underpinning. See KSR Int'l Co.
v. Teleflex Inc., 550 U.S. 398, 418 (2007) (holding that “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.”). As pointed
out by Appellants, the spacer cells in Gallacher are all of the same size
because the cells are designed to accommodate the same size fuel rods 16
(see Gallacher, col. 1, ll. 34-36, and 42-61, col. 4, ll. 29-36, and figs. 5A and
5B). Since the Examiner has failed to support the legal conclusion of
obviousness with facts showing that the cells of Gallacher’s spacer 18 are of
different sizes, the Examiner’s obviousness rejection cannot stand. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967) (holding that “[t]he legal
conclusion of obviousness must be supported by facts. Where the legal
conclusion is not supported by facts it cannot stand.”). Further, although the
Examiner’s rejection includes additional findings attributed to Schreiber and
Poe, these findings do not remedy the deficiency of the Examiner’s
rejection.
Accordingly, we do not sustain the Examiner’s rejection of
independent claim 1, and claims 5-8, 10, and 11 dependent thereon, under 35
U.S.C. § 103(a) as unpatentable over Gallacher, Schreiber, Read, and Poe.

Appeal 2011-004179
Application 11/848,394

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Rejections II and III – Obviousness based on
Gallacher/Schreiber/Read/Poe/Hoffmann and
Gallacher/Schreiber/Read/Poe/Wollar, respectively
The Examiner’s rejection of claims 12 and 13 and the Examiner’s
rejection of claim 9 both rely on the same reason for combining Gallacher
and Read which was determined to lack rational underpinning as discussed
supra. Accordingly, for the same reason as discussed supra, we do not
sustain the Examiner’s rejections, under 35 U.S.C. §103(a), of claims 12 and
13 as unpatentable over Gallacher, Schreiber, Read, Poe, and Hoffman, and
of claim 9 as unpatentable over Gallacher, Schreiber, Read, Poe, and Wollar.

DECISION
We reverse the Examiner’s decision to reject claims 1 and 5-13.

REVERSED

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