Ex Parte Hyde et al

Patent Trial and Appeal Board

Aug 29, 2016

12586805 (P.T.A.B. Aug. 29, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/586,805
136716 7590
HolzerIPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
09/28/2009 Roderick A. Hyde
08/31/2016
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.
365016CIP/0707-032-006 3747
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/31/2016 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
Appeal2014-009256
Application 12/586,805
Technology Center 3600
Before JAMES P. CAL VE, WILLIAM A. 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, 5, 6, and 10. Notice of Appeal, filed Mar. 4, 2014. We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM-IN-PART and enter a NEW GROUND OF
REJECTION pursuant to our authority under 37 C.F.R. § 41.50(b).
Appeal2014-009256
Application 12/586,805
CLAIMED SUBJECT MATTER
Claim 1, the sole independent claim, is reproduced below.
1. A method comprising:
thermoelectrically converting nuclear reactor generated
heat to electrical energy; and
selectively transferring the electrical energy to at least
one operation system of the nuclear reactor system.
REJECTIONS
Claims 1, 5, 6, and 10 are rejected under 35 U.S.C. § 112, first
paragraph, for lack of enablement.
Claims 1, 5, 6, and 10 are rejected under 35 U.S.C. § 102(b) as
anticipated by French (US 4,699,754, iss. Oct. 13, 1987).
ANALYSIS
Claims 1, 5, 6, and 10 for lack of enablement
The Examiner determined that claims 1, 5, 6, and 10 fail to comply
with the enablement requirement because the various systems used in the
method are essentially a black box with no description of the internals in the
Specification. Final Act. 5. The Examiner also found that the disclosure is
insufficient to set forth a description of the internals of the various systems
to enable the device to perform all of the claimed features of converting and
transferring. Id.; Ans. 2-3.
Appellants argue that the Examiner's conclusory determination fails
to address even a single Wands factor as required and therefore does not
establish that undue experimentation is required to practice the invention.
Appeal Br. 11-13. Appellants also argue that the enablement requirement
relates to whether the disclosure enables a skilled artisan to make and use the
claimed invention without undue experimentation. Id. at 12-13. We agree.
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Application 12/586,805
"The enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (quoting In re Wands, 858 F.2d 731, 736-37 (Fed. Cir.
1988)); see Auto. Techs. Int'!, Inc. v. BMW of N. Am., Inc., 501F.3d1274,
1282 (Fed. Cir. 2007) (citing AK Steel and Wands); MANUAL OF PATENT
EXAMINING PROCEDURE ("MPEP") § 2164.08 (9th ed., rev. 7, Nov. 2015)
("The Federal Circuit has repeatedly held that 'the specification must teach
those skilled in the art how to make and use the full scope of the claimed
invention without "undue experimentation'""; "what is well-known is best
omitted" (internal citations omitted)). Factors to consider in determining if
undue experimentation is required are: (1) the quantity of experimentation
needed, (2) the amount of direction or guidance presented, (3) the presence
or absence of working examples, (4) the nature of the invention, (5) the state
of the prior art, ( 6) the level of ordinary skill in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims. See Wands,
858 F.2d at 737; MPEP § 2164.0l(a) Undue Experimentation Factors. The
PTO bears an initial burden of explaining why the claim scope is not enabled
by the specification. In re Wright, 999 F.2d 1557, 1561---62 (1993).
"Whether undue experimentation is required 'is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations."' Streck, Inc. v. Research & Diagnostic Sys., Inc.,
665 F.3d 1269, 1288 (Fed. Cir. 2012) (citation omitted). Without such a
factual inquiry, we cannot sustain this rejection. Moreover, the Specification
provides examples of thermoelectric devices in more detail (Spec. i-fi-f 12, 37-
44) than French (1 :24--46, Fig. 2), which is cited to anticipate the claims.
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Appeal2014-009256
Application 12/586,805
Claims 1, 5, 6, and 10 as anticipated by French
Claim 1
The Examiner found that French discloses the method of claim 1.
Final Act. 6. The Examiner found that the thermoelectric electromagnetic
pump (TEMP) of French converts heat generated by a reactor into electrical
energy and supplies it to run the TEMP pump, which is an operational
system of the reactor system, as claimed. Id. at. 4; Ans. 4.
Appellants argue that French does not teach the selective transfer of
electrical energy to an operation system of a nuclear reactor system because
the TEMP of French is an integrated unit with the thermoelectric elements
supplying electric power to electromagnetic pumping elements of the same
TEMP. Appeal Br. 26. Appellants also argue that the TEMP/jet pump does
not transfer electrical energy to an operation system of a nuclear reactor. Id.
at 25-26; Reply Br. 14--16. Appellants assert that the TEMP automatically
pumps withdrawn coolant to a higher pressure in response to heat from the
coolant in the secondary path. Appeal Br. 26-30; Reply Br. 16-17.
Appellants' arguments do not persuade us of error in the Examiner's
findings that French teaches the method of claim 1. French discloses that
thermoelectric electromagnetic pump (TEMP) 22 converts heat generated by
a nuclear reactor in the form of hot metal coolant 28 into electrical energy.
French, 1:24--38, 2: 1-15. French discloses that TEMP 22 uses the electrical
energy that it generates to generate a magnetic field that moves electrically
conductive metal coolant 28. Id. at 3:20-25, Fig. 2. French thus discloses
that TEMP "selectively transfers" electrical energy from the thermoelectric
elements of TEMP 22 to the electromagnetic pump of TEMP 22 when the
reactor coolant exceeds a temperature setting. Id. at 2:13-18, 3:50-52.
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Appeal2014-009256
Application 12/586,805
Appellants' arguments do not persuade us that the electromagnetic
pump of TEMP 22 cannot be considered an operation system of the nuclear
reactor, inasmuch as it pumps metal coolant 28 as an auxiliary pumping
system and also promotes operation of jet pump 23. Id. at 2: 1-15, 3:25-35.
In this regard, Appellants disclose that electrical energy may be transferred
from thermoelectric device 104 at or near a particular critical temperature of
nuclear reactor system 100 to operation system 110, which includes coolant
system 140 such as primary and secondary coolant system. Spec. i-fi-f 19, 28.
Electrical energy may be transferred to coolant pump 142 of coolant system
140 such as a magnetohydrodynamic pump. Id. i-f 19. Thus, French's supply
of electrical energy from thermoelectric elements to electromagnetic pump
of TEMP 22, which is part of a secondary coolant system, corresponds to the
selective transfer of electrical energy to an operation system of the nuclear
reactor system, as disclosed and claimed.
We thus sustain the rejection of claim 1. To the extent our decision
could be interpreted as going beyond the thrust of the Examiner's rejection,
we denominate our affirmance as a New Ground of Rejection to afford
Appellants an opportunity to respond.
Claim 5
Claim 5 depends from claim 1 and recites that the selective transfer of
electrical energy to at least one operation system is responsive to at least one
condition. The Examiner found that TEMP is responsive to a loss of power
to the pumps operating in the reactor system. Final Act. 6; see Ans. 4--5.
Appellants argue that the rejection of claim 5 should be reversed for
the same reasons as claim 1 from which it depends. Appeal Br. 32. Because
we sustain the rejection of claim 1, this argument is not persuasive.
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Appeal2014-009256
Application 12/586,805
French discloses that the thermoelectric elements of TEMP 22 transfer
electrical energy to an electromagnetic pump when a lower temperature
setting is exceeded, i.e., selectively, as claimed. French, 2:16-18, 3:50-52,
Abstract. As discussed above, Appellants' Specification discloses a similar
arrangement in which electrical energy is supplied from a thermoelectric
device to operating systems of a nuclear reactor in response to conditions
such as temperature changes. Spec. i-f 28 (at or near critical temperature of
reactor coolant), 30 (internal condition 185 includes temperature levels).
Thus, we sustain the rejection of claim 5. To the extent our decision
could be interpreted as going beyond the thrust of the Examiner's rejection,
we denominate our affirmance as a New Ground of Rejection to afford
Appellants an opportunity to respond.
Claim 6
Claim 6 depends from claim 5 and recites that the transfer of electrical
energy to an operation system is "responsive to at least one signal from the
at least one operation system." The Examiner found that French discloses
that TEMP 22 is responsive to a loss of power to the pumps operating in the
nuclear reactor system. Final Act. 6; Ans. 4--5. The Examiner reasoned that
the signal is not required to be electrical and the TEMP is responsive to loss
of power to the pumps such that various signals and changes to the operating
conditions meet the claim limitations. Ans. 4--5.
Appellants argue that French does not disclose transferring electrical
energy to at least one operation system of a nuclear reactor in response to at
least one signal from at least one operation system, as claimed. Appeal Br.
33-34; Reply Br. 18-19. Appellants also argue that the Examiner admits
that French's TEMP does not respond to an electrical signal. Reply Br. 19.
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Appeal2014-009256
Application 12/586,805
The Examiner has not established by a preponderance of evidence that
French discloses selectively transferring electrical energy in response to "at
least one signal from at least one operation system." As discussed above,
French selectively transfers electrical energy upon a temperature change in
the coolant and continues to do so until a lower, safe temperature is reached.
French, 2: 1-15, Abstract. French discloses that TEMP 22 is operative while
the reactor is operational and the starting temperature is exceeded, regardless
of whether or not there is a loss of power to primary cooling pump 12. See
id. at 2:18-22, 3:42--4:4. In other words, the loss of power to pump 12 does
not signal TEMP 22 to begin operation.
Thus, we do not sustain the rejection of claim 6.
Claim 10
Claim 10 depends from claim 6 and recites that the signal is from at
least one security system. The Examiner found that French discloses this
step by transferring electrical energy in response to at least one signal from
the emergency pumping system. Final Act. 6. The Examiner found that the
emergency pumping system cools the reactor and prevents overheating that
could damage the system and thus qualifies as a security system. Ans. 5.
Appellants argue that French's emergency pumping system is not
equivalent to at least one security system. Appeal Br. 34. Appellants also
argue that French does not disclose a security system and the Examiner has
not cited any evidence that an emergency pumping system is equivalent to
the claimed "at least one security system." Id. at 34--35; Reply Br. 20-22.
The Examiner's reliance on the auxiliary pumping system to disclose
a security system does not overcome the deficiencies noted above for
claim 6, from which claim 10 depends. We do not sustain this rejection.
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Appeal2014-009256
Application 12/586,805
DECISION
We REVERSE the rejection of claims 1, 5, 6, and 10 under 35 U.S.C.
§ 112, first paragraph, for lack of enablement.
We AFFIRM the rejection of claims 1 and 5 and REVERSE the
rejection of claims 6 and 10 under 35 U.S.C. § 102(b ). We denominate the
affirmance as a NEW GROUNDS OF REJECTION, as discussed above.
Regarding an affirmed rejection, 37 C.F.R. § 41.52(a)(l) provides
"Appellant[ s] may file a single request for rehearing within two months from
the date of the original decision of the Board."
37 C.F.R. § 41.50(b) provides that "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
( 1) Reopen prosecution. Submit an appropriate amendment of the
claims so rejected or new Evidence relating to the claims so rejected, or
both, and have the matter considered by the examiner, in which event the
proceeding will be remanded to the examiner ....
(2) Request rehearing. Request that the proceeding be reheard under
§ 41.52 by the Board upon the same Record ....
Should Appellants elect to prosecute further before the Examiner
pursuant to 3 7 C.F .R. § 41.50(b )(1 ), in order to preserve the right to seek
review under 35 U.S.C. §§ 141 or 145 with respect to affirmed rejections,
the effective date of the affirmance is deferred until conclusion of the
prosecution before the Examiner unless, as a mere incident to the limited
prosecution, the affirmed rejections are overcome.
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Application 12/586,805
If Appellants elect prosecution before the Examiner and this does not
result in allowance of the application, abandonment or a second appeal, this
case should be returned to the Patent Trial and Appeal Board for final action
on the affirmed rejections, including any timely request for a rehearing.
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; 37 C.F.R. § 41.50(b)
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