Ex Parte Hyde et al

Patent Trial and Appeal Board

Jun 22, 2016

12386052 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/386,052
136716 7590
HolzerIPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
04/13/2009 Roderick A. Hyde
06/24/2016
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.
36501 lUSP/0707-032-006-00 6138
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
06/24/2016 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):
docket@holzerIPlaw.com
docketing@terrapower.com
hiplaw@blackhillsip.com
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, NATHANP. MYHRVOLD,
JOSHUA C. WALTER, THOMAS ALLAN WEA VER,
LOWELL L. WOOD, JR., and VICTORIA Y.H. WOOD
Appeal2014-002262
Application 12/386,052
Technology Center 3600
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 4, 15, 22-25, 27-34, 36-38, 44, and 49-63. Claims 2, 3, 5-14,
16-21, 26, 39-43, and 45--48 are withdrawn. Claims 35 and 64--186 are
cancelled. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-002262
Application 12/386,052
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim on appeal, is reproduced below.
1. A method, comprising:
upon a nuclear reactor shutdown event,
thermoelectrically converting heat generated with
a nuclear reactor to electrical energy; and
supplying the electrical energy to at least one mechanical
pump of the nuclear reactor.
REJECTIONS 1
Claims 28 and 29 are rejected under 35 U.S.C. 112, second paragraph,
as being indefinite.
Claims 1, 4, 15, 22, 30-34, 36-38, 51-52, and 58---61 are rejected
under 35 U.S.C. § 102(b) as anticipated by French (US 4,699,754, iss. Oct.
13, 1987).
Claims 23-25 are rejected under 35 U.S.C. 103(a) as unpatentable
over French and Meckler (US 3,801,284, iss. Apr. 2, 1974).
Claims 27 and 28 are rejected under 35 U.S.C. 103(a) as unpatentable
over French and Gruen (US 2007/0137684 Al, pub. June 21, 2007).
Claim 29 is rejected under 35 U.S.C. 103(a) as unpatentable over
French and Mitchell (US 3,601,887, iss. Aug. 31, 1971).
Claim 44 is rejected under 35 U.S.C. 103(a) as unpatentable over
French and Weill (US 3,277,321, iss. Oct. 4, 1966).
Claims 49 and 50 are rejected under 35 U.S.C. 103(a) as unpatentable
over French and McCoy (US 3,430,079, iss. Feb. 25, 1969).
1 The Examiner withdrew a rejection of claims 22-25, 27-34, 55---63 under
35 U.S.C. § 112, second paragraph, as being indefinite because it recited a
use without any active, positive steps as required by 35 U.S.C. § 101. Ans.
3--4; Final Act. 5---6.
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Appeal2014-002262
Application 12/386,052
Claims 53-55 are rejected under 35 U.S.C. 103(a) as unpatentable
over French and Gilley (US 5,650,904, iss. July 22, 1997).
Claim 56 is rejected under 35 U.S.C. 103(a) as unpatentable French
and Boncodin (US 7,493,974 Bl, iss. Feb. 24, 2009).
Claim 57 is rejected under 35 U.S.C. 103(a) as unpatentable over
French and Boncodin, and further in view of Strnad (US 2005/0012204 A 1,
pub. Jan. 20, 2005).
Claims 62 and 63 are rejected under 35 U.S.C. 103(a) as unpatentable
over French and John (US 2008/0300660 Al, pub. Dec. 4, 2008).
ANALYSIS
Claims 28 and 29 as indefinite under 35 USC 112, second paragraph
The Examiner determined that the term "optimized" in claims 28 and
29 is a relative term that renders those claims indefinite. Final Act. 5. The
Examiner also found that the Specification merely gives one example of one
operating characteristic; temperature; but does not give any direction as to
what other operating characteristics are optimized, or how other undisclosed
characteristics are optimized. Ans. 4.
Appellants argue that their Specification provides a standard for
measuring whether "at least one thermoelectric device is optimized for a
specified range of operating characteristics." Appeal Br. 19. Appellants
point to paragraph 18, which gives examples of thermoelectric devices that
are optimized for maximum efficiency at a specified range of operating
temperatures such as a thermoelectric device comprised of thallium doped
lead telluride. Id. at 19-20; Reply Br. 5. Appellants also argue that their
Specification discloses that operating characteristics include temperature and
pressure. Reply Br. 5 (citing Spec. i-f 99).
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Appeal2014-002262
Application 12/386,052
We agree with the Examiner that a skilled artisan would not be able to
determine the metes and bounds of claims 28 and 29 when those claims are
read in light of Appellants' Specification. Although broad claim scope is not
necessarily a basis for an indefiniteness determination, here, it is not clear
what is being claimed by a "thermoelectric device optimized for a specified
range of operating characteristics" as recited in claim 28 or "optimized for a
first/second range of operating characteristics" in claim 29. Appellants have
not explained adequately how a skilled artisan would be able to understand
what operating characteristics are being optimized, how a range is specified,
and what is meant by optimizing the operating characteristics in a specified
range, as recited in claims 28 and 29.
Appellants are correct in asserting that the Examiner has the burden of
setting forth a rejection under 35 U.S.C. § 112, second paragraph, based on
the disclosure in the Specification. However, Appellants' Specification
provides very little guidance in this regard. Paragraph 99 discloses that such
operating characteristics may include "temperature or pressure." See Reply
Br. 5. Paragraph 18 discloses a single example for "a thermoelectric device
with a maximum efficiency between approximately 200Q C and 500Q C, such
as a thermoelectric device comprised of thallium doped lead telluride." See
Appeal Br. 19--20; Reply Br. 4--5. We agree with the Examiner that it is
unclear what other "operating characteristics" are claimed or how these
undisclosed characteristics are "optimized." Ans. 4. Thus, Appellants have
explained one term that is subjective, "optimized," with other terms that are
equally subjective, "maximum efficiency." There is no indication of how
"maximum efficiency" is to be measured, e.g., by power, electric amperage,
voltage, temperature differential.
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Appeal2014-002262
Application 12/386,052
When the interpretation of a claim and its limitations depends solely
or largely upon the unfettered, subjective interpretation or personal opinion
of someone, without any clear guidance in the Specification, the claims are
likely indefinite. See Dow Chem. Co. v. Nova Chems. Corp. (Canada), 803
F.3d 620, 634 (Fed. Cir. 2015) (citation omitted). That is the case here. It is
unclear how the operating characteristics are determined to be "optimized,"
even ifthe operating characteristics could be determined with any certainty,
and they cannot be. This uncertainty is particularly problematic because it is
not clear whether the "operating characteristics" to be "optimized" pertain to
the operating characteristics of an operating and operational nuclear reactor,
at some undefined level of operation, or pertain to operating characteristics
of the nuclear reactor upon a shutdown event, as recited in claim 1 from
which claims 28 and 29 depend. Furthermore, it is unclear whether the
temperature and pressure pertain to the reactor core, coolant loops, or some
other aspect of the nuclear reactor. See Spec. i-fi-f 14, 18, 19. Paragraph 18 's
disclosure of "maximum output efficiency within the operating temperature
range of the nuclear reactor system 100" leaves unanswered what operating
temperature is covered, e.g., the core, primary or secondary coolant systems,
another area where the thermoelectric device will be utilized, and when the
operating temperature is determined, i.e., before or after a shutdown event.
Accordingly, we sustain the rejection of claims 28 and 29.
Claims 1, 4, 15, 22, 30-34, 36-38, 51-52, and 58-61 anticipated by French
The Examiner found that French discloses thermoelectrically
converting heat generated with a nuclear reactor to electrical energy and
supplying the electrical energy to at least one mechanical pump of the
nuclear reactor, as claimed. Final Act. 6 (citing French, 1:18-27); Ans. 5.
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Appeal2014-002262
Application 12/386,052
Appellants argue that French does not disclose supplying the electrical
energy that is generated thermoelectrically to "at least one mechanical pump
of the nuclear reactor" as recited in claim 1. Appeal 33. Appellants argue
that French generates electrical energy thermoelectrically and then provides
that energy to a thermoelectric electromagnetic pump (TEMP) but a TEMP
pump is not equivalent to the claimed mechanical pump. Id. at 34; Reply
Br. 6-7. Appellants argue that a mechanical pump converts input electrical
energy into mechanical energy that then pumps a given liquid mechanically
whereas French's TEMP pump is an electromagnetic pump. Reply Br. 7.
The Examiner has not established by a preponderance of evidence that
French discloses the step of supplying electrical energy that is generated by
a thermoelectric device from heat generated by a nuclear reactor to at least
one mechanical pump, as recited in claim 1. The Examiner's interpretation
of "mechanical pump" to include a thermoelectric electromagnetic pump is
unreasonably broad. French discloses that TEMP 22 generates a magnetic
field using electrical energy from thermoelectric elements that are driven by
the heat of hot metal coolant 28 from the reactor and the magnetic field then
moves the electrically conductive hot metal coolant 28. French, 2:20-25,
Fig. 2. Thus, French discloses that TEMP 22 supplies electrical energy to an
electromagnetic pump that moves electrically-conductive metal coolant 28
using a magnetic field rather than to a mechanical pump that moves fluids
using mechanical elements. Id. Nor does French disclose providing any
electrical energy to the jet pump even if that pump could be considered a
mechanical pump. See Appeal Br. 33.
Accordingly, we do not sustain the rejection of claims 1, 4, 15, 22,
30-34, 36-38, 51-52, and 58-61 as anticipated by French.
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Appeal2014-002262
Application 12/386,052
Unpatentability of claims 23-25, 27-29, 44, 49, 50, 53-57, 62, and 63
The Examiner rejected claims 23-25, 27-29, 44, 49, 50, 53-57, 62,
and 63 under 35 U.S.C. § 103(a) based on French in combination with one
or more of Meckler, Gruen, Mitchell, Weill, McCoy, Gilley, Boncodin,
Strnad, and John. The Examiner relied on each of these references to teach
features recited in those dependent claims 23-25, 27-29, 44, 49, 50, 53-57,
62, and 63, but not to overcome any deficiencies of French as to claim 1, as
discussed above. Thus, we do not sustain these rejections.
DECISION
We AFFIRM the rejection of claims 28 and 29 for indefiniteness and
REVERSE the prior art rejections of claims 1, 4, 15, 22-25, 27-34, 36-38,
44, and 49---63 under 35 U.S.C. § 102 and 103(a).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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