Ex Parte Futterer et al

Patent Trial and Appeal Board

Feb 28, 2013

11816461 (P.T.A.B. Feb. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte MICHAEL A. FUTTERER, PETER HOPPE, JOSEF SINGER,
and BLUHM HANSJOACHIM
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Appeal 2010-006273
Application 11/816,461
Technology Center 3600
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Before EDWARD A. BROWN, MICHAEL C. ASTORINO, and
MICHAEL L. HOELTER, Administrative Patent Judges.

BROWN, Administrative Patent Judge.

DECISION ON APPEAL
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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the rejection of
claims 14-32. App. Br. 4. Claims 1-13 have been cancelled. Id. We have
jurisdiction over this appeal under 35 U.S.C. § 6(b).
We reverse.

CLAIMED SUBJECT MATTER
Claims 14 and 24 are the independent claims on appeal. Claim 14,
reproduced below, is illustrative of the appealed subject matter:
14. A head-end process for the reprocessing of
reactor core material comprising fuel particles, the
process comprising:
arranging said reactor core material in a
reactor containing a fluid, said reactor having a
voltage discharge installation in said fluid;
fragmenting said fuel particles into
fragmentation products by applying voltage
discharges through said fluid; and
segregating said fragmentation products.

REJECTIONS
Appellants request review of the following rejections:
1. The rejection of claims 14-16, 18, 19, 21-26, and 29-32 under
35 U.S.C. § 103(a) as unpatentable over Masson, HTGR Spent Fuels
Processing: The CEA Investigation Program, 2nd Intl. Topical Meeting on
High Temperature Reactor Technology (2004) ("Masson") and Del Cul,
TRISO-Coated Fuel Processing to Support High Temperature Gas-Cooled
Reactors, Oak Ridge National Laboratory (2002) ("Del Cul").
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2. The rejection of claims 17, 20, 27, and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Masson, Del Cul, and Boettcher (US
3,669,832; iss. Jun. 13, 1972).

ANALYSIS
Rejection of claims 14-16, 18, 19, 21-26, and 29-32 – Masson and Del Cul
Claim 14 is directed to a head-end process for the reprocessing of
reactor core material comprising the step of "fragmenting said fuel particles
into fragmentation products by applying voltage discharges through said
fluid." Emphasis added. The Examiner found Masson teaches fragmenting
fuel particles into fragmentation products, but not by applying voltage
discharges through the fluid. Ans. 5 (citing Masson, p. 1, para. 3, ll. 5-6, p.
6, sec. 2.2.3). The Examiner also found that Masson teaches that the matrix
material is fragmented by applying voltage discharges through fluid. Id.
(citing Masson, p. 5, sec. 2.2.2., ll. 14-17). The Examiner found that Del
Cul teaches fragmenting fuel particles and coatings, by burning and/or
crushing, after fragmenting the matrix. Id. (citing Del Cul, p. 13; Fig. 3.1).
The Examiner concluded that it would have been obvious to one of ordinary
skill in the art to attempt to fragment the fuel particles in the same manner as
Masson teaches matrix fragmentation, "in order to recover the actinides
while avoiding the disadvantages of alternative fragmentation methods (e.g.
crushing, burning, grinding, etc.) such as large amounts of carbon dioxide
production and incomplete break up of particle layers." Id.
Appellants contend that neither Masson nor Del Cul teaches
fragmenting fuel particles via voltage discharges. App. Br. 13. Masson
discloses processes for the removal of the kernel layers from fissile kernels
coated with layers of carbon and silicon carbide by oxidation or by
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carbochlorination of the layers. See Masson, Abstract. These kernels are
dispersed in graphite. Id. Masson discloses dismantling the filler graphite
by use of voltage discharges in the presence of water. See Masson, p. 5, sec.
2.2.2. Masson also discloses processes for removal of the kernel layers. See
Masson, pp. 6-8, sec. 2.2.3. Masson discloses that processes for breaking
the layers by mechanical grinding produce wear of the tools because of the
abrasive character of silicon carbide, and that breaking of the layers by such
mechanical means also entails liberation of fission products, making off-
gases treatment necessary. Id. Masson states that "[f]or these reasons,
oxidizing processes [seem] preferable to mechanical ones to favor a
maximum desorption of the gaseous or volatile fission products in the off
gases under the effect of the temperature." Id. Masson describes thermal
processes (sec. 2.2.3.1) and pyrometallurgical processes (sec. 2.2.3.2) for
this purpose. Accordingly, we agree with Appellants that while Masson
teaches a high-voltage discharge technique for fragmentation of graphite
matrix material, Masson teaches using a different process (i.e., oxidizing
processes) for removing coatings from kernels of fuel particle fissile
material. App. Br. 13. The Examiner did not identify any disclosure in
Masson that the high-voltage discharge technique can also be used for
removing coatings from the kernels.
Appellants contend that graphite and fuel particles have quite different
physical properties, including density, modulus of elasticity, fracture
toughness, and electrical resistance, and that due to these differences, one of
ordinary skill in the art would have no motivation or reasonable expectation
of success in using voltage discharge for fragmentation of fuel particles.
App. Br. 14, see also App. Br. 17. Appellants also contend that although the
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fragmenting of fuel particles was a known problem, and some mechanical
and oxidizing processes were known solutions, the prior art as a whole does
not mention fragmenting fuel particles using the voltage discharge
technique. App. Br. 15. Appellants correctly contend that Masson discloses
this problem and the voltage discharge fragmentation technique, but does not
mention that this technique could be the solution to the problem. App. Br.
17.
We agree with Appellants that the Examiner did not provide any
evidence that modifying Masson's process of removing kernel layers by
substituting the claimed fragmenting of fuel particles by applying voltage
discharges through fluid would produce a predictable result, with a
reasonable expectation of success. App. Br. 15-16. Although Masson
teaches fragmenting graphite filler using voltage discharges, Masson does
not teach that this same process could be successfully used for fragmenting
the kernels. The Examiner stated that "[o]ne of ordinary skill in the art
would expect that if voltage discharges are capable of fragmenting graphite,
they would also be capable of fragmenting a harder material if the voltage
was significantly increased." Ans. 15-16. The Examiner did not, however,
provide evidence to support this position. In addition, Appellants point out
that Masson teaches that breaking the SiC layer (of fuel particles) is
particularly difficult. Reply Br. 4-5 (citing Masson, p. 1, last two lines; p. 3,
sec. 1, last three lines). Appellants contend that Masson, despite having
knowledge of the voltage fragmentation technique, failed to recognize this
technique as a suitable process for fragmenting fuel particles.
The Examiner also states that "Masson prefers to remove the fuel
particle coatings using an oxidation [technique], instead of voltage
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discharge, to avoid expensive off gases treatment (page 6, paragraph 2, lines
6-7." Ans. 18. However, Masson actually states that "oxidizing processes
[seem] preferable to mechanical ones." Appellants correctly contend that
Masson does not specifically state that oxidizing techniques are preferable to
using "voltage discharge." Reply Br. 5. We agree with Appellants that
Masson's description of "mechanical ones" appears to refer to mechanical
processes developed in the 1960s to 1970, and Masson specifically mentions
"mechanical grinding." Reply Br. 6; see also Masson, p. 6, sec. 2.2.3. We
also agree with Appellants that even if using a voltage discharge were
interpreted as a "mechanical process," Masson does not provide any
indication that voltage discharge may be a potentially successful mechanical
process for fragmenting fuel particles. Reply Br. 4.
Appellants acknowledge that Del Cul discloses at least one process
with a first process step comprising crushing graphite fuel blocks, and
another step of crushing SiC coatings of fuel particles. App. Br. 16 (citing
Del Cul, p. 13, fig. 3.1). The Examiner did not identify any disclosure in
Del Cul that the voltage discharge technique can be used for fragmenting
fuel particles. We agree with Appellants that the disclosure of these
crushing processes does not teach or suggest modifying Masson's process to
include the claimed "fragmenting" step for fuel particles (id.; see also Reply
Br. 6), much less that such modification would produce a predictable result,
with a reasonable expectation of success.
In view of the record before us, we do not sustain the rejection of
claim 14, and its dependent claims 15, 16, 18, 19, and 21-23.
Claim 24 is directed to a head-end process for the reprocessing of
reactor core material comprising matrix materials and fuel particles, and
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recites "applying first voltage discharges through said first volume of fluid
so as to primarily fragment said matrix material, thereby obtaining
fragmentation products," and "applying second voltage discharges through
said second volume of fluid so as to fragment said coatings." The
Examiner's findings and conclusions for the rejection of claim 24 (Ans. 8-9)
are similar to those discussed supra in relation to the rejection of claim 14.
Accordingly, we also do not sustain the rejection of claim 24, and its
dependent claims 25, 26, and 29-32.

Rejection of claims 17, 20, 27, and 28 – Masson, Del Cul, and Boettcher
Claims 17 and 20 depend from claim 14, and claims 27 and 28 depend
from claim 24. The Examiner relied on Boettcher for disclosure relating to
the use of sieving. Ans. 10-11. As such, the Examiner's application of
Boettcher does not cure the deficiencies of the Examiner's rejection of
claims 14 and 24, as discussed supra. We do not sustain the rejection of
claims 17, 20, 27, and 28.

DECISION
The Examiner's decision rejecting claims 14-32 is REVERSED.

REVERSED

mls