Ex Parte Hyde et al

Patent Trial and Appeal Board

Feb 14, 2014

11605933 (P.T.A.B. Feb. 14, 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.
11/605,933 11/28/2006 Roderick A. Hyde 0806-032-003-000000 5560
44765 7590 02/14/2014
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
02/14/2014 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 2011-009927
Application 11/605,933
Technology Center 3600
____________________

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

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-009927
Application 11/605,933
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STATEMENT OF THE CASE
Roderick A. Hyde et al. (Appellants) appeal under 35 U.S.C. § 134
the Examiner’s decision to reject claims 34 and 35 under 35 U.S.C. § 103(a)
as unpatentable over Edward Teller et al., Completely Automated Nuclear
Reactors for Long-Term Operation II: Toward A Concept-Level Point
Design Of A High-Temperature, Gas-Cooled Central Power Station System,
International Conference on Emerging Nuclear Energy Systems, 1-41 (June
20, 1996) (“Teller”). We have jurisdiction under 35 U.S.C. § 6(b).
We AFFRIM.

CLAIMED SUBJECT MATTER
Sole independent claim 34, reproduced below, is representative of the
claimed subject matter:
34. A method of transferring heat from a nuclear fission
reactor core, the method comprising:
generating heat from propagating nuclear fission
deflagration wave fission in a nuclear fission reactor core; and
transferring the heat from propagating nuclear fission
deflagration wave fission to a condensed phase density fluid.

ANALYSIS
The Examiner finds that Teller teaches, inter alia, “transferring the
heat from propagating nuclear fission deflagration wave fission to a fluid
(i.e.[,] helium gas), but fails to teach that the fluid is a condensed phase
density fluid including at least one of water, liquid metals, terphenyls,
polyphenyls, fluorocarbons, and FLIBE.” Ans. 4. The Examiner also finds
that Teller teaches “that there are many possible choices for the coolant
(page 20; paragraph 5, lines 1-3).” Id. The Examiner states that “fluids
(e.g.[,] water, liquid metals, etc.), listed above, are old and well known
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Application 11/605,933
3
coolants used for reactor cooling” and that “one of ordinary skill in the art
would consider said coolants to be obvious variants of helium gas.” Id. The
Examiner concludes that “it would have been obvious . . . to transfer the heat
from the propagating nuclear fission deflagration wave fission to at least one
of water, liquid metals, terphenyls, polyphenyls, fluorocarbons, and FLIBE.”
Id. at 4-5.
The Appellants argue that “the Examiner erred by not supporting with
objective evidence her assertion that condensed phase density fluid coolants
are obvious variants of helium gas.” App. Br. 29; see also id. at 31-38 and
75. The Examiner states “official notice [was taken] in the non-final and
final office actions that water and liquid metals are old and well known
nuclear reactor coolants [and] obvious variants of helium gas.” See Ans. 6-
7. The Examiner also provides Pennell (US 4,369,893; iss. Jan. 25, 1983)
and Hattori (US 6,944,255 B2; iss. Sep. 13, 2005). See id. at 7.
The Appellants argue that “the evidence proffered by the Examiner
does not support the Examiner’s assertion that condensed phase density fluid
coolants are obvious variants of helium gas.” Id. at 36. The Appellants
argue that “Pennell . . . only teaches that the fluid seal may be used with
various reactor coolant fluids such as helium gas, water, or liquid sodium”
and that “a teaching that a fluid seal may be used with various reactor
coolant fluids such as helium gas, water, or liquid sodium does not support
an assertion that condensed phase density fluid coolants are obvious variants
of helium gas.” Id. The Appellants also argue that “Hattori . . . discloses
two embodiments of nuclear reactors in which various reactor coolant fluids
may be used provided suitable modifications are made that are appropriate
for the fluid selected as the reactor coolant” and that “a teaching that various
non-conductive reactor coolant fluids may be used provided suitable
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modifications are made . . . does not support an assertion that condensed
phase density fluid coolants are obvious variants of helium gas.” Id. at 37.
The Appellants’ arguments are not persuasive. Pennell discloses that
a “reactor coolant fluid, such as helium gas, water[,] or liquid sodium, enters
the vessel . . . absorbing heat energy.” Pennell, col. 3, ll. 30-33. Hattori
discloses that “[a]s a primary coolant 3, there is used a liquid metal coolant,
a liquid such as light water or heavy water, or a gas such as a helium gas or a
carbon dioxide.” Hattori, col. 8, ll. 50-52. The evidence references
proffered by the Examiner each disclose that helium gas, water, and liquid
sodium are alternatives for each other in absorbing heat energy or as a
primary coolant, and thus, the Examiner’s proffered evidence supports by
preponderance of the evidence that helium gas is a variant of a condensed
phase density fluid, such as water or liquid sodium, for use in absorbing heat
energy or as a primary coolant.
The Appellants argue that Teller teaches away from the subject matter
of claims 34 and 35. App. Br. 38-58, 75; Reply Br. 16-23. After describing
Teller (id. at 39-48), the Appellants argue “Teller . . . teaches that, in order to
be seen as being obviously safe, one design measure is to make the
function[s] of the reactor fully automatic and obviously safe from all types
of human error and another design measure is to construct power reactors
underground” (id. at 49) and “such teachings . . . teach away . . . because use
of a condensed phase density fluid as reactor coolant requires human access
to the reactor for maintenance (some of which requires the reactor to be shut
down)” (id. at 50), such as “sampling of reactor coolant” (id. at 50-52),
“periodic replacement of coolant purification media” (id. at 52-54), and
“periodic non-destructive inspection” (id. at 54-56). See also Reply Br. 16-
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23. The Appellants also argue that Teller teaches away because “the reactor
must be a fast breeder reactor.” App. Br. 56-58; see also Reply Br. 23-24.
The Appellants’ arguments are not persuasive. Teller discloses that
“we have evaluated a 600 K water-heating design (of appropriately
minimized intra-core coolant volume) which functions in nucleonic,
structural[,] and most heat transfer senses quite similarly to the helium-
heating one just discussed.” Teller 9, ¶ 4. The Appellants provide technical
reasons why a condensed phase density fluid cannot be used, but Teller
teaches that an alternative water-heating design functions similarly to the
helium-heating design. A reference does not teach away from claimed
subject matter merely because it describes an alternative solution to a
problem addressed by the subject matter. In re Fulton, 391 F.3d 1195, 1201
(Fed. Cir. 2004).
The Appellants also argue that Teller teaches away because it states
“[a]s core coolant, we plan to employ pressurized helium rather than water”
which “avoids all hazards arising from water reactions with high-
temperature materials, and provides favorable independence of the core’s
neutronic reactivity on coolant-voiding.” App. Br. 48 (citing Teller 6, ¶ 2
(emphasis omitted)). The Appellants further argue that “the water of the 600
K water-cooled version must not be, cannot be, and is not in a condensed
phase.” Id. at 58. However, as stated in Medichem, S.A. v. Rolabo, S.L., 437
F.3d 1157, 1165 (Fed. Cir. 2006):
[O]bviousness must be determined in light of all the facts, and
there is no rule that a single reference that teaches away will
mandate a finding of nonobviousness. Likewise, a given course
of action often has simultaneous advantages and disadvantages,
and this does not necessarily obviate motivation to
combine. See [Winner Int’l Royalty Corp. v. Wang, 202 F.3d
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1340, 1349 n. 8 (Fed. Cir. 2000)] (“The fact that the motivating
benefit comes at the expense of another benefit, however,
should not nullify its use as a basis to modify the disclosure of
one reference with the teachings of another. Instead, the
benefits, both lost and gained, should be weighed against one
another.”).
Thus, the Appellants’ further argument is unpersuasive because,
although Teller provides disadvantages of using a water-heating design,
Teller also discloses that a water-heating design functions similarly to a
helium-heating design despite those disadvantages. See Teller 9, ¶ 4.
The Appellants 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 modify the Teller . . . reactor to transfer the
heat from propagating nuclear fission deflagration wave fission to liquid
water.” App. Br. 58. The Appellants argue that “the Examiner has set forth
[an] opinion.” Id. at 58 (citing Office Action (mailed Nov. 2, 2009)). The
Appellants also cite the Examiner’s response in an Office Action mailed
May 20, 2010 as providing an admonishment to the Appellants and an
Advisory Action mailed August 19, 2010 as relying on uncited definitions of
water and steam. Id. at 59.
The Examiner provides a rationale. See Ans. 4-5. For the reasons
discussed supra, the Appellants fail to show that the Examiner’s rationale is
not supported by the proffered evidence that discloses helium gas, water, and
liquid sodium are alternatives for each other. Furthermore, Hattori discloses
that “[a]s the primary coolant 3, there is used a liquid metal coolant, a liquid
. . . , or a gas . . . .” Hattori, col. 8, ll. 50-52. Thus, the proffered evidence
indicates water and steam are alternatives for each other.
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The Appellants argue that the proposed modification renders Teller
unsatisfactory for its intended purpose. App. Br. 60-67, 75; Reply Br. 24-
25. The Appellants’ argument is not persuasive as Teller states that “we
have evaluated a 600 K water-heating design (of appropriately minimized
intra-core coolant volume) which functions in nucleonic, structural[,] and
most heat transfer senses quite similarly to the helium-heating one just
discussed.” See Teller 9, ¶ 4.
The Appellants argue that the proposed modification changes the
principle of operation of Teller. App. Br. 68-74, 75; Reply Br. 25. The
Appellants’ argument is not persuasive as Teller states that “a 600 K water-
heating design . . . functions in nucleonic, structural[,] and most heat transfer
senses quite similarly to the helium-heating one just discussed.” See Teller
9, ¶ 4.
The Appellants argue that the “Examiner’s Answer introduced a new
ground of rejection (obvious to try) as a rationale to justify the assertion that
condensed phase density fluids are obvious variants of helium gas.” Reply
Br. 13-14 (citing Ans. 8). Even if the Examiner introduced a new ground of
rejection based on a different rationale, requesting that a ground of rejection
set forth in an Examiner’s Answer be designated as a new ground of
rejection is a petitionable matter under 37 C.F.R. § 1.181, not one appealable
to this Board. See id.; see also Ex Parte Frye, 94 UPSQ2d 1072, 1077-78
(BPAI 2010) (precedential); In re Berger, 279 F.3d 975, 984-85 (Fed. Cir.
2002)(petitionable issues are not subject to review by the Board); Manual of
Patent Examining Procedure (MPEP) § 1207.03 IV (8th ed., rev. 9, Aug.
2012). Moreover, the asserted new rationale is related to the rationale in the
Final Rejection that “one of ordinary skill in the art would consider said
coolants to be obvious variants of helium gas” (Final Rej. 3) because one of
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Application 11/605,933
8
ordinary skill in the art would expect success because the modification is
known in the art. “If [pursuing known options] leads to the anticipated
success, it is likely the product not of innovation but of ordinary skill and
common sense.” See KSR Int’l. Co. v. Teleflex, Inc., 550 U.S. 398, 421
(2007).
The Appellants argue that “there is no reasonable expectation of
success because Teller . . . teaches away from the condensed phase density
fluids of Pennell . . . and/or Hattori . . . .” Id. at 14-16. For the reasons
supra, the Appellants’ argument regarding no reasonable expectation of
success is not persuasive because Teller discloses a water-heating design
functions similarly to a helium-heating design. See Teller 9, ¶ 4.
The Appellants argue that “[d]ependent [c]laim 35 is patentable for at
least the reasons why [i]ndependent [c]laim 34 is patentable.” App. Br. 60.
Accordingly, we sustain the Examiner’s rejection of claims 34 and 35 under
35 U.S.C. § 103(a) as unpatentable over Teller.

DECISION
For the above reasons, the Examiner’s rejection of claims 34 and 35 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)(1)(iv) (2011).

AFFIRMED

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