Ex Parte Hummel et al

Patent Trial and Appeal Board

Apr 24, 2014

12604756 (P.T.A.B. Apr. 24, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte WOLFGANG HUMMEL, WOLFGANG NAHR, and
WOLFGANG LUCKEN
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Appeal 2012-004038
Application 12/604,756
Technology Center 3600
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Before: JENNIFER D. BAHR, LYNNE H. BROWNE, and JILL D. HILL,
Administrative Patent Judges.

BAHR, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-004038
Application 12/604,756

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STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 1 and 2. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.

The Claimed Subject Matter
Claim 1, reproduced below, is illustrative of the claimed subject
matter.
1. A method of dismantling a control element of a boiling water
reactor, the method which comprises:
providing a control element having a longitudinal center
axis defining a longitudinal direction, a cross-shaped solid core
body and control element leaves disposed in a cross shape,
originating from the solid core body and having mutually-
opposite substantially flat sides, the control element leaves
including two first control element leaves disposed opposite
one another relative to said longitudinal center axis and two
second control element leaves disposed opposite one another
relative to said longitudinal center axis;
moving the control element and a guide relative to each
other in axial direction;
providing a cutting unit with at least two cutting rolls;
placing one of the cutting rolls onto one of the mutually-
opposite substantially flat sides of one of the control element
leaves in vicinity of the solid core body, and placing another of
the cutting rolls onto one of the mutually-opposite substantially
flat sides of another of the control element leaves disposed
opposite to the one of the control leaves, relative to the
longitudinal center axis; and
separating the first control element leaves from the
second control element leaves with the cutting unit in a roll-
cutting process and thereby cutting along a cutting line
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extending in the longitudinal direction and in a vicinity of the
longitudinal center axis.

Evidence
The Examiner relied on the following evidence in rejecting the claims
on appeal:
Krieg
Knecht
US 5,055,236
US 5,940,462
Oct. 8, 1991
Aug. 17, 1999
Osada JP57-130749 (A) Aug. 13, 1982

Rejections
Claims 1 and 2 stand rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
Claim 2 stands rejected under 35 U.S.C. § 112, second paragraph, as
being indefinite.
Claims 1 and 2 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Knecht, and Osada.

OPINION
Enablement
When rejecting a claim for lack of enablement, the PTO bears the
initial burden of setting forth a reasonable explanation as to why the scope of
the claim is not adequately enabled by the description provided in the
specification. In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).
Insofar as the enablement requirement is concerned, the dispositive
issue is whether the applicant’s disclosure, considering the level of ordinary
skill in the art as of the date of the applicant’s application, would have
enabled a person of such skill to make and use the applicant’s invention
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without undue experimentation. In re Strahilevitz, 668 F.2d 1229, 1232
(CCPA 1982).
The Examiner’s basis for rejecting Appellants’ claims for lack of
enablement is that Appellants’ Specification fails to provide an enabling
disclosure of a method as called for in claim 1, comprising the step of
“providing a cutting unit with at least two cutting rolls; placing one of the
cutting rolls onto one of the mutually-opposite substantially flat sides of one
of the control element leaves . . . and placing another of the cutting rolls onto
one of the mutually-opposite substantially flat sides of another of the control
element leaves disposed opposite to the one of the control leaves. . . .” Ans.
6. The Examiner’s position is that the disclosure “does not provide support
for only one cutting roll on each opposite control leaf” because Figure 2
shows “two cutting rolls placed on each of two opposite control element
leaves.” Id. The Examiner further takes the position that the disclosure does
not support “‘at least two cutting rolls’, which includes only two cutting rolls
and only three cutting rolls. Rather at least 4 cutting rolls are provided on
the control element of the instant invention.” Id.
Appellants point to paragraph [0030] as providing adequate support
for the recitation of “at least two cutting rolls.” App. Br. 6. Paragraph
[0030] states:
As an alternative to the paired arrangement of cutting
rolls 4 illustrated in the figure, it is also possible to provide only
a single cutting roll 4 for each of the two control leaves 6a, 6c
that are to be detached, and this cutting roll 4 is in each case
assigned a mating roll without any cutting edges which is
placed onto the surface of the control element leaf 6a or 6c as a
counter-roller.
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Thus, Appellants assert that the subject claims are fully in accord with
35 U.S.C. § 112, first paragraph. App. Br. 7.
Initially, we note that it is the function of the specification, not the
claims, to set forth the “practical limits of operation” of an invention. One
does not look to claims to find out how to practice the invention they define,
but to the specification. See In re Johnson, 558 F.2d 1008, 1017 (CCPA
1977). We appreciate the Examiner’s position that Appellants’ invention
requires a cutting roll on one side of any leaf to be cut and either a
corresponding cutting roll or a corresponding mating roll on the other side of
the leaf. See Ans. 11. We also appreciate that claim 1 only positively
recites a cutting roll on one side of a control element leaf and a second
cutting roll on one side of another control element; claim 1 does not
positively recite the corresponding cutting roll or mating roll for each of the
recited cutting rolls. We also note, however, that claim 1 does not exclude
corresponding cutting or mating rolls. The Examiner does not set forth the
requisite findings and technical reasoning to show that a person of ordinary
skill in the art, upon reading Appellants’ Specification, would not have been
able to perform the method of claims 1 and 2 without undue
experimentation. See, e.g., In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)
(setting forth factors that may be considered in determining whether a
disclosure would require undue experimentation).
We do not sustain the Examiner’s rejection of claims 1 and 2 under
35 U.S.C. § 112, first paragraph, as lacking enablement.

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Indefiniteness
The Examiner’s indefiniteness rejection of claim 2 focuses on the
limitation “forming a roll cut on each of the two flat sides of each first
control element leaf by moving a pair of cutting rolls toward one another.”
The Examiner states that “[i]t is not clear how a roll cut is formed on each
first control element leaf by moving a pair of cutting rolls towards one
another.” Ans. 7. The Examiner further takes the position that “[a]
simultaneous cutting of both leaves cannot be performed by moving a pair of
cutting rolls toward one another.” Ans. 12.
Appellants point to paragraph [0027] and Figure 2 as providing
adequate support for the recitation in question, arguing that they “explicitly
disclose how the cutting rolls operate when a pair of cutting rolls is used on
each respective leaf.” App. Br. 8. Paragraph [0027] states:
The cutting rolls 4, in the region of the core body 10, are placed
onto the flat sides of the control elements leaves 6a and 6c, in
each case in pairs, and are then moved toward one another in
the direction indicated by the arrows 16. An advancing motion
perpendicular to a longitudinal center axis A executes a rolling
cut along a cutting line S. The cutting line S extends in the
longitudinal direction, i.e., perpendicular to the plane of the
drawing and parallel to the longitudinal center axis A, in the
vicinity of the crossing point or in the vicinity of the
longitudinal center axis A.
Thus, Appellants’ argument is that claim 2 satisfies the requirements
of 35 U.S.C. § 112, second paragraph. App. Br. 8.
The Examiner’s rejection is not well founded. Claim 2 does not
require a simultaneous cutting of both leaves as the Examiner contends.
Rather, claim 2 calls for a roll cut to be formed on the sides of “each” first
control element leaf by moving a pair of cutting rolls toward each other. We
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agree with Appellants’ argument that paragraph [0027] of their Specification
describes such cutting operation. Advancement of the roll cut along the
cutting line S is effected by
relative movement of the control element 6 and the cutting unit
2 in the direction of the longitudinal center axis of the control
element 6 . . . either through movement of the control element 6
with the cutting unit 2 stationary . . . or by displacement of the
entire device along the stationary control element 2.
Spec., para. [0025]. However, movement of the pair of rolls toward one
another in to position to engage the sides of the leaf effects the cutting
operation in that the cut cannot be achieved without first moving the pair of
rolls toward one another. See Spec., paras. [0027]-[0028]. Therefore, we do
not agree with the Examiner that the limitation “forming a roll cut on each of
the two flat sides of each first control element leaf by moving a pair of
cutting rolls toward one another” renders claim 2 indefinite, and we do not
sustain the rejection of claim 2 under 35 U.S.C. § 112, second paragraph.

Obviousness
Appellants argue that Krieg “explicitly discloses that the saw blade
(16) cuts the length of main body (15a) along a center longitudinal axis of
a central spline (300)” and thus “teaches away from cutting the flat sides
of the control element leaves.” App. Br. 10. Appellants contend that Krieg
discloses cutting chevrons 104 because chevrons can be stored more
compactly and, thus, Krieg teaches away from cutting planar shapes. Id.
Appellants also contend that Krieg cannot be modified to cut through the
individual leaves 302 because it would change the method of operation of
Krieg. App. Br. 12-13. Appellants also argue that while Knecht discloses
separating the control leaves from the cross-shaped core body along the
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longitudinal axis, Knecht does not disclose how the separating step is carried
out. App. Br. 13. Thus, Appellants argue that Knecht does not cure the
deficiency of Krieg. Id. Appellants further argue that Osada does not
disclose a longitudinal cut and does not disclose dismantling a control
element. App. Br. 14. Appellants add that the rejection “is based upon an
inadmissible, retrospective view, which presumes knowledge of the
invention.” App. Br. 16.
The Examiner finds that Krieg discloses alternative ways of
dismantling a control rod into smaller components (e.g., cutting along the
center longitudinal line of the main body 15a rather than cutting each
individual blade near the central spine), but that Krieg does not teach away
from the instant invention. Ans. 13-14 (referring to Krieg’s discussion of
the Steinert patent); see Krieg, col. 2, ll. 10-20 (disclosing a prior art
procedure of removing the individual blade sections from the central spine
by longitudinal cuts “quite near” the central spine). The Examiner explains
that “[t]he proposed modification is to replace the saw blade of Krieg with
the cutting rolls of Osada, then cutting a flat portion of the solid core body in
a vicinity of the longitudinal center axis such that each individual leaf is
severed from the central portion of the control rod.” Ans. 14. The Examiner
relies upon Knecht to teach “cutting each control element leaf from the solid
core body along their longitudinal axis.” Ans. 14-15. The Examiner
reasons:
If the cutting rolls 12, 13 of Osada were used to cut each
of the control element leaves 3 from the solid core body [of
Krieg], as taught in Knecht et al., said cutting rolls would be
placed onto one of the mutually-opposite substantially flat sides
of one of the control element leaves in [the] vicinity of the solid
core body, and onto one of the mutually-opposite substantially
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flat sides of another of the control element leaves disposed
opposite to the one of the control leaves, relative to the
longitudinal center axis and separating the first control element
leaves from the second control element leaves with the cutting
unit in a roll-cutting process and thereby cutting along a cutting
line extending in the longitudinal direction and in a vicinity of
the longitudinal center axis.
Ans. 9. The Examiner also finds that the proposed modification does not
require “a substantial reconstruction or redesign of Krieg, and it does not
change the basic principle under which Krieg’s invention was designed to
operate.” Id. at 15. The Examiner also points out that both Krieg and
Knecht disclose a longitudinal cut along the length of an object and
dismantling a control element. Id. at 16.
We do not agree with Appellants that Krieg teaches away from cutting
along the flat sides of the leaves. Krieg clearly discloses a method of
dismantling a cruciform-shaped control element by cutting it into smaller
sections for safer, more efficient disposal. Krieg, col. 2, ll. 43-63. Further,
as correctly pointed out by the Examiner, Krieg discloses cutting the
cruciform-shaped main body into two chevron shaped sections as an
alternative to the prior art (Steinert) method of cutting each individual blade
section near the central spine to separate the blades from the spine.
However, a reference does not teach away if it merely expresses a general
preference for an alternative invention from amongst options available to the
ordinarily skilled artisan, and the reference does not discredit or discourage
investigation into the invention claimed. See In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004) (“mere disclosure of alternative designs does not teach
away”). Moreover, the Examiner finds that replacing the saw blade of Krieg
with cutting rolls as taught by Osada would alleviate the difficulty with
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cutting the individual blades near the central spine with a saw blade alluded
to by Krieg (i.e., difficulty fitting a saw blade into the restricted regions
where the cut must be made), and Appellants do not contest this finding.
Ans. 15; see Krieg, col. 2, ll. 20-24.
Appellants’ argument that the Examiner’s proposed modification
would change the method of operation of Krieg is not convincing. Krieg is
directed to a method of reducing the volume of radioactive cruciform shaped
control rods for storage (col. 1, ll. 17-20) by cutting them into smaller
sections. The method of Krieg modified as proposed by the Examiner would
still reduce the volume of the cruciform shaped control rods for storage by
cutting them into smaller sections.
Appellants’ arguments that Knecht does not disclose the cutting
process with any specificity and that Osada discloses horizontal cutting
rather than longitudinal cutting amount to attacks on Knecht and Osada
individually, rather than as combined with Krieg, as proposed by the
Examiner. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986). As pointed out by the Examiner, both Krieg and Knecht
disclose longitudinal cutting, and Osada teaches cutting using cutting rolls.
The combination of Krieg, Knecht, and Osada proposed by the
Examiner is nothing more than the predictable use of prior art elements
according to their established functions or the simple substitution of one
known technique for another. See KSR Int’l Co. v. Teleflex, Inc., 550 U.S.
398, 416 (2007) (stating that an improvement that is nothing more than the
predictable use of prior art elements according to their established functions
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is likely to be obvious). Accordingly, we do not agree with Appellants that
the Examiner’s rejection “is based upon an inadmissible, retrospective view,
which presumes knowledge of the invention.” See App. Br. 16.
Finally, Appellants argue that “[t]he combination of references
applied by the Examiner does not result in all the claim limitations” (App.
Br. 17), but fail to specifically identify any claim limitation not satisfied by
the combination. Accordingly, this argument does not show error in the
rejection.
For the above reasons, Appellants’ arguments do not apprise us of
error in the Examiner’s rejection of claim 1. We sustain the Examiner’s
rejection of claim 1 as unpatentable over Krieg, Knecht and Osada. We also
sustain the like rejection of claim 2, for which Appellants do not present any
separate arguments, and which thus falls with claim 1.

DECISION
The Examiner’s decision rejecting claims 1 and 2 under 35 U.S.C.
§ 112, first paragraph, as failing to comply with the enablement requirement
is reversed. The Examiner’s decision rejecting claim 2 under 35 U.S.C.
§ 112, second paragraph, as being indefinite is reversed. The Examiner’s
decision rejecting claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over Krieg, Knecht, and Osada is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

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AFFIRMED

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