Ex Parte Hyde et al

Patent Trial and Appeal Board

Feb 27, 2014

11605943 (P.T.A.B. Feb. 27, 2014)

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.
11/605,943 11/28/2006 Roderick A. Hyde 0806-032-001-000000 5579
44765 7590 02/27/2014
THE INVENTION SCIENCE FUND
CLARENCE T. TEGREENE
11235 SE 6TH STREET
SUITE 200
BELLEVUE, WA 98004
EXAMINER
GREGORY, BERNARR E
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
02/27/2014 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 RODERICK A. HYDE, MURIEL Y. ISHIKAWA,
NATHAN P. MYHRVOLD, and LOWELL L. WOOD, JR.
____________________

Appeal 2012-000397
Application 11/605,943
Technology Center 3600
____________________

Before STEFAN STAICOVICI, LYNNE H. BROWNE, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2012-000397
Application 11/605,943

2
STATEMENT OF THE CASE1
Roderick A. Hyde et al. (Appellants) appeal under 35 U.S.C. § 134
from a final rejection of claims 9-15, 131-145, 150, 152, and 154. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

CLAIMED SUBJECT MATTER
The claims are related to “automated nuclear fission reactors.” Spec.
2:9. Sole independent claim 9, reproduced below, is representative of the
claimed subject matter:
9. A nuclear fission reactor comprising:
a nuclear fission reactor core assembly having a burning
region;
a plurality of previously-burned nuclear fission fuel
assemblies loaded in the burning region, each previously-
burned fuel assembly including
a cladding structure; and
a reactor coolant system.

REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nakajima
Garzarolli
Bowman
US 5,307,387
US 5,493,592
US 6,233,298 B1
Apr. 26, 1994
Feb. 20, 1996
May 15, 2001
Edward Teller et al., Completely Automated Nuclear Power Reactors
for Long-Term Operation: III. Enabling Technology For Large-Scale, Low-
Risk, Affordable Nuclear Electricity, University of California Lawrence

1 The Appellants state that “Appellants’ legal representative and the real
party in interest are aware that an appeal has been filed in U.S. Patent
Application Ser. No. 11/605,933 [appeal no. 2011-009927] . . . , which may
be related to . . . the present appeal.” App. Br. 2 and Reply Br. 10.
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Livermore National Laboratory, presented at the Workshop of the Aspen
Global Change Institute, 1-57 (July 2003) (“Teller”).

REJECTIONS
The Appellants seek our review of the following rejections under 35
U.S.C. § 103(a):
claims 9, 10, 13-15, 135-145, 150, 152, and 154 as unpatentable over
Teller and Bowman; and
claims 9, 11, 12, and 131-134 as unpatentable over Nakajima and
Garzarolli.

ANALYSIS
Claims 9, 10, 13-15, 135-145, 150, 152, and 154
Unpatentability over Teller and Bowman
The Examiner finds that “Teller . . . teaches a nuclear fission reactor
comprising . . . a burning region (figure 4; page 50)” but “fails to teach a
plurality of previously burned nuclear fission fuel assemblies loaded in the
burning region.” Ans. 4-5. The Examiner finds that “Bowman teaches a
plurality of previous[ly] burned nuclear fuel assemblies loaded in the
burning region of a nuclear fission reactor (figure 1: established technology;
column 9, line 66 – column 10, line 4).” Id. at 5. The Examiner states that a
“motivation for using previously burned fuel in the nuclear fission reactor
core assembly is to destroy the ‘waste’ generated in nuclear reactors in a
useful way” and concludes that “it would have obvious . . . to construct the
nuclear fission reactor as described above.” Id.

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The Appellants argue that “Teller . . . teaches away from combining
Teller . . . and Bowman.” App. Br. 8, 27, and 34-35; see also Reply Br. 17,
36. In particular, the Appellants argue that “Teller . . . teaches vehemently
that spent fuel is not to be transported and reprocessed.” Id. at 35; see also
id. at 36. The Appellants also state that “the cited portion of Bowman
clearly shows spent-fuel handling, transport, reprocessing, and disposal.” Id.
at 36. The Appellants thus argue that “combining Teller . . . and Bowman
would result in: (i) spent fuel being handled, transported to a reprocessing
facility, and reprocessed; (ii) reprocessed spent fuel being fabricated into
fuel; and (iii) fuel fabricated from reprocessed spent fuel being loaded in the
reactor of Teller.” Id.
The Examiner responds that Teller “only teaches that the fuel installed
in the reactor, during core manufacture, is not reprocessed at the end of [the]
cycle” and “does not teach or suggest that the fuel installed in the reactor,
during core manufacture, should not be reprocessed fuel previously burned
in a different reactor.” Ans. 18 (emphasis omitted). The Examiner also
responds that “Teller . . . does not teach that reprocessed fuel would not
work or would be destructive, if it were used in the reactor taught in Teller.”
Id. The Examiner further states that “reprocessing the spent fuel and reusing
the recovered fissile material to fuel the reactor taught in Teller . . . is a
means of reducing existing nuclear waste without the need for further
reprocessing.” Id. The Examiner further responds that the “issues,
regarding reprocessing, disclosed in Teller . . . are not reasons why a person
of ordinary skill in the art would not make the combination and would not
discourage one of ordinary skill in the art from seeking the benefits of using
reprocessed fuel.” Id. The Examiner also finds that “[w]hen Teller . . .
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discloses that the reactor entirely avoids transport and reprocessing, it is
referring to transport/reprocessing that would occur after the reactor is
started” and “Teller . . . teaches nothing that suggests that reprocessed
nuclear fuel should not be installed in the reactor during core manufacture
and burned during the reactor life.” Id. at 19 (emphasis omitted).
The Appellants reply that “the reactor of Teller . . . ‘entirely avoids
transport and reprocessing . . . and completely precludes all those [issues]
involving proliferation/diversion of fissile isotopes into weapons programs.”
Reply Br. 40 (emphasis omitted, citing Teller, Abstr.). The Appellants note
that Teller states “[r]eprocessing therefore should be avoided to the greatest
extent possible” and “[f]uel for reactors of present interest during all times in
its existence, from manufacture through final-and-irreversible disposal, must
be of a nature as to have no utility . . . for any military purposes without
isot[opic] enrichment capability being exercised on it.” Id. at 41 (emphasis
omitted, citing Teller 6). The Appellants also note that Teller teaches “the
reactor of Teller . . . ‘uses essentially unenriched, as-mined actinide isotopic
fuels of all types . . . without reprocessing’” and “[p]erhaps the single most
notable implication of the present results is . . . nuclear reactors capable of
zero-reprocessing.” Id. at 42 (emphasis omitted, citing Teller 10, 31, and
32). The Appellants argue that “Teller . . . teaches vehemently that spent
fuel is not to be transported and reprocessed” because it states “[s]ince they
are never re-fueled, these new types of reactors present no spent-fuel
handling, transport, reprocessing, or disposal issues, and they greatly reduce
military diversion concerns” and “present plans to collect reactor products at
a safe central location has the intrinsic difficulty of hazards arising from
accidents during the initial removal and storage and the subsequent
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transportation of the spent fuel assemblies.” Id. at 59 (emphasis omitted);
see also id. at 61. The Appellants also argue that “the cited portion of
Bowman clearly shows spent-fuel handling, transport, reprocessing, and
disposal (geologic storage of reprocessing remnant waste).” Id. at 60; see
also id. at 61. The Appellants thus argue that “combining Teller . . . and
Bowman would result in: (i) spent fuel being handled, transported to a
reprocessing facility, and reprocessed; (ii) reprocessed spent fuel being
fabricated into fuel; and (iii) fuel fabricated from reprocessed spent fuel
being loaded in the reactor of Teller . . . ” and therefore, “Teller . . . teaches
away from the very things – spent-fuel handling, transport, and reprocessing
– that the Examiner cited in Bowman.” Id. at 61.
Teller states under “Constraints And Their Motivations” that
“[r]eprocessing . . . should be avoided to the greatest extent possible” and
that “[f]uel for reactors of present interest during all times in its existence,
from manufacture through final-and-irreversible disposal, must be of a
nature as to have no utility . . . for any military purposes without isotopic
enrichment . . . ” Teller 6-7. Teller further states that these constraints are
considered “to be essential ones.” Id. at 6. However, Teller does not
completely exclude the use of reprocessed fuel because Teller seeks to avoid
such use “to the greatest extent possible.” See id. Furthermore, fuel that has
no utility for any military purposes without further enrichment does not
exclude use of reprocessed fuel. Moreover, Teller states that “these
constraints aren’t linearly independent, in that more than one may be
simultaneously satisfied by a single design choice and that some particular
ways of satisfying one may conflict significantly with satisfying another.”
Id. at 7. Teller also states that “[w]e strongly suspect that many other
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designs – some significantly different from the one which we’ve explored –
would also satisfy the constraints which we have suggested above are
necessary-&-sufficient for universal acceptability of nuclear power.” Id. at
10. Teller further discloses “a conceptual-level point-design of a nuclear
power reactor which . . . satisfies the constraints we have stated above”
which includes “the use of a comparatively small ‘nuclear ignitor’ region of
moderate (sub-weapons-grade) isotopic enrichment in the geometric center
of the core’s fuel-charge.” Id. at 9. Teller also states that “[m]oderately
enriched uranium for use in the ignitor modules of reactor cores can be
competitively procured in any needed quantity from Russian, European, or
American sources.” Id. at 20. Teller does not expressly exclude reprocessed
moderately enriched uranium from Russian, European, or American sources
for the ignitor module. “A reference does not teach away, however, if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek,
Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d
1195, 1201 (Fed. Cir. 2004)). Therefore, because the Appellants’ arguments
have not shown that a person of ordinary skill, upon reading Teller, would
be discouraged from using reprocessed fuel or would be led in a direction
divergent from such use, the Appellants’ arguments are not persuasive. See
In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994).
The Appellants argue that “combining Teller . . . and Bowman would
render Teller . . . unsatisfactory for its intended purpose.” App. Br. 8 and
37-38 and Reply Br. 62. In particular, the Appellants argue that “an
intended function of Teller . . . is to provide nuclear fission reactor-derived
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electricity that entirely avoids transport and reprocessing of spent fuel” and
“the cited portion of Bowman merely illustrates and discloses conventional
reprocessing of spent fuel.” App. Br. 38 and Reply Br. 63-64. The
Appellants thus argue that “combining Teller . . . and Bowman would result
in: (i) spent fuel being handled, transported to a reprocessing facility, and
reprocessed; (ii) reprocessed spent fuel being fabricated into fuel; and (iii)
fuel fabricated from reprocessed spent fuel being loaded in the reactor of
Teller” App. Br. 39 and Reply Br. 64.
The Examiner responds that “the combination of Teller . . . and
Bowman suggests that the fuel initially installed in the reactor, taught in
Teller . . . , is reprocessed fuel from another nuclear reactor” and “when
Teller . . . discloses that the reactor entirely avoids transport and
reprocessing, it is referring to transport/reprocessing that would occur after
the reactor is started.” Ans. 19 (emphasis omitted). The Examiner states
that “Teller . . . teaches nothing that suggests that reprocessed nuclear fuel
should not be installed in the reactor during the initial core manufacture” and
“teaches that once all the fuel in the reactor has burned, no subsequent fuel
reprocessing or transport occurs.” Id. at 20. The Examiner also states that
“initially loading the reactor, taught in Teller . . . , with reprocessed fuel
reduces existing nuclear waste from other reactors without the need for
further reprocessing and/or transport.” Id.
The Appellants’ arguments are not persuasive because using
reprocessed fuel in the initial fuel loading would not render Teller
unsatisfactory for its intended purpose. As discussed supra, Teller does not
exclude the use of reprocessed fuel when providing the initial fuel to the
reactor of Teller.
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The Appellants argue that the Examiner’s statements in the Answer
are “statements that Teller . . . teaches something beyond its actual
disclosure.” Reply Br. 48 (citing Ans. 18, 19). In particular, the Appellants
argue that “to the direct contrary of the Examiner’s statements, Teller . . .
states that ‘[f]uel for reactors of present interest during all times in its
existence, from manufacture through final-and-irreversible disposal, must be
of a nature as to have no utility, regardless of quantity, for any military
purposes without isot[opic] enrichment capability being exercised on it’”
and that “Teller . . . states that ‘preparation of the fuel for reactor use must
involve sufficiently simple operations . . . ’.” Id. at 48, 49 (emphasis
omitted, citing Teller 6). The Appellants thus argue that “Teller . . . clearly
and unambiguously shows that, contrary to the Examiner’s statement, Teller
. . . teaches that the fuel installed in the reactor, during core manufacture, is
not reprocessed at the beginning of cycle (that is, manufacture).” Id. The
Appellants’ arguments are not persuasive. For the reasons discussed supra,
the Appellants have not shown that Teller excludes the use of reprocessed
fuel when providing the initial fuel to its reactor.
The Appellants further argue that “the Examiner’s statement that ‘[a]s
. . . implied by Teller . . . , the fast reactor of Teller . . . could safely function
using reprocessed fuel . . . ’ is a statement that Teller . . . teaches something
beyond its actual disclosure.” Reply Br. 50. The Appellants’ argument is
not persuasive because, as discussed supra, Teller discloses the use of
“[m]oderately enriched uranium for use in the ignitor modules of reactor
cores” that “can be competitively procured in any needed quantity from
Russian, European, or American sources.” See Teller 20. The Appellants
have not persuasively shown why such sources do not include moderately
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enriched, reprocessed uranium or why reprocessed uranium would not work
as the ignitor module for the reactor of Teller.
The Appellants argue that the Examiner’s statements in the Answer
“are wholly unsupported by any evidence, let alone by substantial
evidentiary support.” Reply Br. 51 (citing Ans. 18, 19). In particular, the
Appellants argue that “to the direct contrary of the Examiner’s statements,
Teller . . . states that ‘[f]uel for reactors of present interest during all times in
its existence, from manufacture through final-and-irreversible disposal, must
be of a nature as to have [no] utility, regardless of quantity, for any military
purposes without isot[opic] enrichment capability being exercised on it’”
and that “Teller . . . states that ‘preparation of the fuel for reactor use must
involve sufficiently simple operations . . . ’.” Id. at 52, 53-54 (emphasis
omitted, citing Teller 6). The Appellants thus argue that “Teller . . . clearly
and unambiguously shows that, contrary to the Examiner’s statement, Teller
. . . teach[es] that the fuel installed in the reactor, during core manufacture, is
not reprocessed at the beginning of cycle (that is, manufacture).” Id. at 52
(emphasis omitted). The Appellants further argue that “Teller . . . clearly
and unambiguously show[s] that, contrary to the Examiner’s statement, . . .
(i) that the fuel installed in the reactor, during core manufacture, is not
reprocessed at the beginning of cycle (that is, manufacture) and (ii) that the
fuel installed in the reactor, during core manufacture, should not be
reprocessed fuel previously burned in a different reactor.” Id. at 54
(emphasis omitted). For the reasons supra, the Appellants’ arguments are
not persuasive.
The Appellants provide no separate arguments for the patentability of
claims 10, 13-15, 135-145, 150, 152, and 154 which depend from
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independent claim 9. App. Br. 8, 27-40, and 60 and Reply Br 17, 36-65, and
89. Accordingly, we sustain the Examiner’s rejection of claims 9, 10, 13-15,
135-145, 150, 152, and 154 under 35 U.S.C. § 103(a) as unpatentable over
Teller and Bowman.
Claims 9, 11, 12, and 131-134
Unpatentability over Nakajima and Garzarolli
The Examiner finds that
Nakajima . . . teaches a nuclear fission reactor comprising a
nuclear fission reactor core assembly 10 having a burning
region; a plurality of previously burned nuclear fission fuel
assemblies (1, 2, 3, and 4 cycle fuel) loaded in the burning
region, but fails to specifically teach that each previously
burned fuel assembly includes a cladding structure and a reactor
coolant system.
Ans. 12.
The Examiner also finds that “Garzarolli . . . teaches a nuclear fission fuel
assembly that includes a cladding structure 2 and the fuel [is] at least
partially contained within the cladding structure 2 (figure 1).” Id. at 13. The
Examiner states that a “motivation for partially containing the fuel within the
cladding is to inhibit the coolant from reacting with the hot fuel (Garzarolli .
. . ; column 2, lines 34-42)” and that “it is old and well known in the art that
fuel cladding is used to house nuclear reactor fuel in the fuel assembly.” Id.
The Examiner concludes that “it would have been obvious . . . to construct
the nuclear fission fuel assembly to include previously burned nuclear
fission fuel at least partially contained within a cladding structure.” Id.
The Appellants argue that “the Examiner did not interpret the claim
term ‘burning region’ consistent with the [S]pecification.” App. Br. 8, 40;
see also id. at 52 and Reply Br. 65, 74, 78-80. In particular, the Appellants
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argue “the Final Office Action merely made a conclusory statement that “ . .
. Nakajima . . . teaches . . . a nuclear fission reactor core assembly 10 having
a burning region; a plurality of previously burned nuclear fission fuel
assemblies (1, 2, 3, and 4 cycle fuel) loaded in the burning region . . . ’.” Id.
at 52 (emphasis omitted). The Appellants argue that “the Examiner did not
indicate (via a reference number or any other means) how or where a
‘burning region’ is allegedly taught by Nakajima . . . ” but the “Appellants’ .
. . [S]pecification states that ‘propagation of the nuclear fission deflagration
wave [is] also referred to herein as ‘nuclear fission burning’.” Id. at 52-53
(emphasis omitted). The Appellants further argue that there is no evidence
that the Examiner considered the Specification in interpreting “burning
region.” Id. at 52, 53.
The Examiner responds that the “ordinary meaning [of] the term
‘burning region’, in the context of nuclear reactors, is a region wherein
nuclear fuel can be burned,” that the “term ‘burning region’ is not clearly
redefined in the [S]pecification,” that the “[S]pecification discloses that the
‘nuclear fission deflagration burn-wave-propagating region suitably contains
thorium or uranium fuel, and functions on the general principle of fast
neutron spectrum fission breeding,’” and that the “reactor, taught in
Nakajima . . . , contains thorium or uranium and functions on the general
principle of fast neutron spectrum fission breeding.” Ans. 20-21 (citing
App. Br. 29 and Nakajima, col 18, l. 62).
The Appellants provide a description of the Examiner’s response
(Reply Br. 65-67), Nakajima (id. at 67-73), Garzarolli (id. at 73-74), the
Specification’s guidance regarding “burning region” (id. at 75-58), and the
Appellants reply that the “Examiner ignored Appellants[’] definition in the .
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. . [S]pecification of ‘burning’: ‘propagation of the nuclear fission
deflagration wave, [is] also referred to herein as ‘nuclear fission burning’’”
(id. at 79). The Appellants argue that “the Examiner ignored Appellants’. . .
[S]pecification at page 22, line 1 – page 24, line 3 . . . that explains
Appellants[’] definition of ‘burning’ . . . ”. Id.
The Appellants’ arguments are not persuasive. The Appellants’ cited
definition from page 22 of the Specification pertains to “nuclear fission
burning,” not “burning region.” Also, claim 9 does not require that the
“burning region” be associated with “nuclear fission deflagration wave.”
See App. Br., Claims App’x. Instead, claim 9 recites “a nuclear fission
reactor core assembly having a burning region” and does not further require
that the “burning region” initiate, propagate, or be the result of propagation
of a nuclear fission deflagration wave. See id. Furthermore, claim 10,
which depends from claim 9, recites “wherein the burning region is
configured to initiate and propagate a nuclear fission deflagration wave,”
and thus, by claim differentiation, the term “burning region” in claim 9 must
be broader than the “burning region” of claim 10. See id. Therefore, the
Appellants have not persuasively shown error in the Examiner’s
interpretation of “burning region.”
The Appellants argue that “the Examiner’s statement that Nakajima . .
. teaches a burning region is a statement that Nakajima . . . teaches
something beyond its direct disclosure.” App. Br. 8, 40, 53; see also id. at
53-56 and Reply Br. 65, 80-81. In particular, the Appellants argue that
“Nakajima . . . does not disclose anything whatsoever regarding
‘propagation of [a] nuclear fission deflagration wave [that is] also referred to
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herein as ‘nuclear fission burning’’” and “does not disclose a nuclear fission
reactor core assembly having a burning region.” Id. at 55.
The Examiner responds that “a nuclear fission deflagration wave is
not recited in rejected [c]laim 9,” that “propagation of a nuclear fission
deflagration wave is a recitation of the intended use of the claimed
invention” and “must result in a structural difference between the claimed
invention and the prior art,” that the “burning region of Nakajima . . . is
capable of propagating therein a nuclear fission deflagration wave,” and that
“Nakajima . . . teaches a burning region well within the broadest reasonable
interpretation of the claim.” Ans. 21-22.
The Appellants reply that “the Examiner ignored Appellants’ . . .
[S]pecification at page 22 . . . that explains Appellants[’] definition of
‘burning’” and that “nowhere does Nakajima . . . teach, disclose, mention,
suggest, or even intimate anything regarding propagation of a nuclear fission
deflagration wave.” Reply Br. 81. The Appellants’ arguments are not
persuasive because, as discussed supra, the arguments provided by the
Appellants do not persuasively show that the Examiner failed to interpret
correctly the term “burning region” of claim 9 and thus, fail to show error in
the Examiner’s findings from Nakajima.
In reply to the Examiner’s response that the “burning region of
Nakajima . . . is capable of propagating therein a nuclear fission deflagration
wave,” the Appellants argue that “the Examiner has read into the claims
from the [S]pecification the limitation ‘propagation of a nuclear fission
deflagration wave’ – solely for the purpose of giving it no patentable
weight.” Reply Br. 82 (citing Ans. 22). The Appellants’ argument is not
persuasive. The Examiner makes additional findings in the Appellants’
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Specification and Nakajima to determine that Nakajima is capable of
propagating a nuclear fission deflagration wave. See Ans. 20-21. In
particular, the Examiner finds that the “[S]pecification discloses that the
‘nuclear fission deflagration burn-wave-propagating region suitably contains
thorium or uranium fuel, and functions on the general principle of fast
neutron spectrum fission breeding,’” and that the “reactor, taught in
Nakajima . . . , contains thorium or uranium and functions on the general
principle of fast neutron spectrum fission breeding.” Ans. 20-21 (citing
App. Br. 29 and Nakajima, col 18, l. 62).
The Appellants argue that the Examiner’s statement that the “burning
region of Nakajima . . . is capable of propagating therein a nuclear fission
deflagration wave” is “wholly unsupported by any evidence whatsoever.”
Reply Br. 83 (citing Ans. 22). The Appellants’ argument is not persuasive.
As discussed supra, claim 9 encompasses more than an association between
“burning region” and the propagation of a nuclear fission deflagration wave.
Moreover, the Examiner finds that the “[S]pecification discloses that the
‘nuclear fission deflagration burn-wave-propagating region suitably contains
thorium or uranium fuel, and functions on the general principle of fast
neutron spectrum fission breeding,’” and that the “reactor, taught in
Nakajima . . . , contains thorium or uranium and functions on the general
principle of fast neutron spectrum fission breeding.” Ans. 20-21 (citing
App. Br. 29 and Nakajima, col 18, l. 62). The Examiner reasonably finds
structural similarities between the reactor of Nakajima and the disclosed
nuclear fission deflagration burn-wave-propagating region. When an alleged
characteristic is a function or intended use of the device, the Appellants, and
not the Examiner, are in the best position to establish the existence or non-
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existence of that characteristic. Thus, the Examiner may shift the burden to
the Appellants to prove that the prior art does not possess the characteristic
alleged by the Examiner. Here, the Appellants do not persuasively show
why Nakajima cannot have a burning region associated with such a wave.
The Appellants argue that “the Examiner did not set forth a rationale,
supported by objective evidence.” App. Br. 8, 40, 56; see also id. at 56-59
and Reply Br. 65, 84-89. In particular, the Appellants argue that “Nakajima
. . . does not disclose a ‘burning region’ as properly interpreted considering
Appellants’ . . . [S]pecification” and that “combining Nakajima . . . and
Garzarolli . . . results in a boiling water reactor core, other light water reactor
core, or a fast breeder reactor core into which clad fresh fuel assemblies are
loaded, within which . . . fuels are shuffled, and from which . . . fuels are
discharged.” App. Br. 56-57; see also Reply Br. 86. The Appellants thus
argue that “the Examiner has not set forth a rationale, supported by objective
evidence sufficient to demonstrate . . . that . . . there was a teaching to
combine Nakajima . . . and Garzarolli . . . because the combination of
Nakajima . . . and Garzarolli . . . does not teach or suggest the combination .
. . [or] ‘a nuclear fission reactor core assembly having a burning region’.”
Id. at 58. The Appellants also argue that “the combination of Nakajima . . .
and Garzarolli . . . does not teach or suggest ‘a plurality of previously-
burned nuclear fission fuel assemblies loaded in the burning region,’ as
recited.” Id. at 59. The Appellants further argue that “the combination of
Nakajima . . . and Garzarolli . . . is a boiling water reactor core without a
‘burning region’ as properly interpreted considering Appellants’ . . .
[S]pecification” and that “does not teach or suggest ‘a nuclear fission reactor
core assembly having a burning region.’” Reply Br. 86-87. The Appellants
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thus argue that “the Examiner has not set forth a rationale, supported by
objective evidence . . . , that in the prior art extant at the time of invention
there was a teaching to combine Nakajima . . . and Garzarolli . . . to
construct a device practicably equivalent to that of [c]laims 9, 11, 12, and
131-134 as a whole because . . . the combination . . . does not teach or
suggest ‘a nuclear fission reactor core assembly having a burning region.’”
Id. at 87. The Appellants further argue that “the combination of Nakajima . .
. and Garzarolli . . . does not teach or suggest ‘a plurality of previously-
burned nuclear fission fuel assemblies loaded in the burning region’” and
that “the Examiner has not set forth a rationale, supported by objective
evidence . . . , that in the prior art extant at the time of invention there was a
teaching to combine Nakajima . . . and Garzarolli . . . to construct a device
practicably equivalent to that of [c]laims 9, 11, 12, and 131-134 as a whole
because . . . the combination . . . does not teach or suggest ‘a plurality of
previously-burned nuclear fission fuel assemblies loaded in the burning
region.’” Id. at 88.
The Appellants’ arguments are not persuasive. As discussed supra,
the Appellants’ arguments do not persuasively show that the Examiner failed
to interpret correctly the term “burning region” of claim 9. Also, the
Appellants’ argument that the references do not provide a motivation or
suggestion to combine Nakajima with Garzarolli is foreclosed by KSR, in
which the Court rejected the rigid requirement of a teaching, suggestion or
motivation to combine known elements in order to show obviousness. KSR
Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 419 (2007). The Court noted that an
obviousness analysis “need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
Appeal 2012-000397
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18
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” Id. at 418. Here, the Examiner does provide an adequate
reasoning with rational underpinning to combine the teachings of Nakajima
and Garzarolli, namely, “for partially containing the fuel within the cladding
. . . to inhibit the coolant from reacting with the hot fuel.” See Ans. 13.
The Appellants argue that “the claim limitation ‘burning region’ is a
structural limitation that is to be properly interpreted considering Applicants’
definition of burning region” and that “the claim term ‘burning region’
constitutes a positive limitation because it sets definite boundaries on the
patent protection sought.” Reply Br. 84. For the reasons discussed supra,
the Appellants’ arguments do not persuasively show that the Specification
provides a definition for “burning region” or that the Examiner failed to
interpret correctly the term “burning region.”
The Appellants do not provide separate arguments for the
patentability of claims 11, 12, and 131-134, which depend from claim 9.
App. Br. 8 and 40-60 and Reply Br 17 and 65-89. Accordingly, we sustain
the Examiner’s rejection of claims 9, 11, 12, and 131-134 under 35 U.S.C.
§ 103(a) as unpatentable over Nakajima and Garzarolli.

DECISION
The Examiner’s rejections of claims 9-15, 131-145, 150, 152, and 154
are affirmed.

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Application 11/605,943

19
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).

AFFIRMED

Klh