Ex Parte Keegan et al

Patent Trial and Appeal Board

Oct 29, 2012

11743844 (P.T.A.B. Oct. 29, 2012)

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.
11/743,844 05/03/2007 C. Patrick Keegan NPP2007-002 7636
26353 7590 10/29/2012
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
EXAMINER
LEACH, ERIN MARIE BOYD
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
10/29/2012 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 C. PATRICK KEEGAN, JAMES H. SCOBEL,
RICHARD F. WRIGHT
____________

Appeal 2010-009419
Application 11/743,844
Technology Center 3600
____________

Before LINDA E. HORNER, KEN B. BARRETT, and
CHARLES N. GREENHUT, Administrative Patent Judges.

HORNER, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
C. Patrick Keegan et al. (Appellants) seek our review under 35 U.S.C.
§ 134 of the Examiner’s decision rejecting claims 1-5 and 7-17. The
Examiner objected to claim 6 as being dependent upon a rejected base claim,
Appeal 2010-009419
Application 11/743,844

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but indicated that this claim would be allowable if rewritten in independent
form. Ans. 3. We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
THE INVENTION
Appellants’ claimed invention “relates to an apparatus for providing
thermal insulation around a nuclear reactor pressure vessel while at the same
time permitting the reactor vessel to be surrounded passively with cooling
water in the event of a severe accident in which the core material relocates.”
Spec., para. [0001]. Claim 1, reproduced below, is representative of the
subject matter on appeal.
1. Apparatus for thermally insulating a vessel during normal
operating conditions and cooling the vessel in the event that an
accident condition has a potential for raising the vessel
temperature above a predefined limit, comprising:
a vessel having a bottom head and a sidewall extending
upwardly therefrom;
thermal insulation surrounding the vessel and spaced
from the bottom head and the sidewall; and
at least one inlet door hingedly attached to the thermal
insulation, the inlet door being sealed by gravity against a stop
on the thermal insulation during normal operation and floatable
with a given buoyancy when immersed in a fluid to move to an
open position to permit the fluid liquid to gain access to the
space between the vessel and the thermal insulation under
predetermined abnormal operating conditions to cool the vessel
without the inlet door providing an obstruction to flow of the
fluid in the open position.
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Application 11/743,844

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THE EVIDENCE
The Examiner relies upon the following evidence:
Clemens US 4,429,329 Jan. 31, 1984
Coomes US SIR1 - H558 Dec. 6, 1988
Schreiber US 5,699,394 Dec. 16, 1997
Hollmann US 5,889,830 Mar. 30, 1999

THE REJECTIONS
Appellants seek review of the following rejections:
1. Claims 14 and 15 are rejected under 35 U.S.C. § 112, first paragraph,
as failing to comply with the enablement requirement.
2. Claims 1-5, 7-9, 11, 13, and 16 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Schreiber and Hollmann.
3. Claims 10 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Schreiber, Hollmann, and Coomes.
4. Claim 17 is rejected under 35 U.S.C. § 103(a) as being unpatentable
over Schreiber, Hollmann, and Clemens.
ISSUES
The issues presented by this appeal are:
Has the Examiner met the initial burden of setting forth a reasonable
explanation as to why the scope of protection provided by claim 14 is not
adequately enabled by the description of the invention provided in the
Specification?

1 “US SIR” stands for United States Statutory Invention Registration.
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Does Hollmann teach an inlet door that is hingedly attached to the
thermal insulation and sealed against a stop on the thermal insulation during
normal operation and floatable with a given buoyancy when immersed in a
fluid to move to an open position, as called for in claim 1?
ANALYSIS
Rejection of claims 14 and 15 under 35 U.S.C. § 112, first paragraph
The Examiner determined that the Specification does not enable any
person skilled in the art to which it pertains, or with which it is most nearly
connected, to make or use the invention commensurate in scope with claim
14, which recites that “the cooling air path only exits the reactor cavity
approximately at the nozzle positions.” Ans. 5. In particular, the Examiner
determined that some cooling air introduced through the tunnel 33 and into
the reactor cavity 19 could circulate from the cavity 19 and back into the
tunnel 33, such that the tunnel 33 would serve as another exit for some of the
cooling air. Id.
When rejecting claims for lack of enablement “the PTO bears an
initial burden of setting forth a reasonable explanation as to why it believes
that the scope of protection provided by that claim is not adequately enabled
by the description of the invention provided in the specification of the
application[.]” In re Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993)
(citing In re Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for
compliance with the enablement requirement is whether the disclosure, as
filed, is sufficiently complete to enable one of ordinary skill in the art to
make and use the claimed invention without undue experimentation. In re
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Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). To evaluate whether a
disclosure would require undue experimentation is a legal conclusion
reached by weighing many factual considerations including:
(1) the quantity of experimentation necessary, (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 relative skill of those in the art, (7) the
predictability or unpredictability of the art, and (8) the breadth
of the claims.
Id. at 737 (citations omitted).
As noted by Appellants, the Specification describes that the cooling
air path begins at the bottom of the reactor cavity 19 when the cooling air is
introduced through the tunnel 33, and flows upwardly in the direction of
arrow 35 along the walls 31 and through the space 29 between the walls and
the thermal barrier 23, and then exits through ducts 63, which extend
through the reactor nozzle support 17. App. Br. 6 (citing Spec., paras.
[0021], [0023]). The Examiner has not met the initial burden of showing
that the disclosure would require undue experimentation in order to enable
one of ordinary skill to make and use the claimed invention. In particular,
the Examiner has not set forth facts tending to show that one of ordinary
skill in the art, with some experimentation, would not be able to make and
use an apparatus that allows air to flow only along the path described in
Appellants’ Specification. “Enablement is not precluded by the necessity for
some experimentation .... However, experimentation needed to practice the
invention must not be undue experimentation. The key word is ‘undue,’ not
‘experimentation.”’ In re Wands, 858 F.2d at 736-37 (internal citation
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omitted.) Accordingly, we reverse the rejection of claims 14 and 15 under
35 U.S.C. § 112, first paragraph.
Rejection of claims 1-5, 7-9, 11, 13, and 16 under 35 U.S.C. § 103(a) over
Schreiber and Hollmann
Claims 7, 8, 13, and 16 depend ultimately from claim 6, which the
Examiner indicated contains allowable subject matter. As such, claims 7, 8,
13, and 16, by virtue of their dependency from claim 6, likewise must have
been implicitly determined to contain allowable subject matter.
Accordingly, we reverse the rejection of claims 7, 8, 13, and 16 under
35 U.S.C. § 103(a).
With regard to the remaining claims subject to this rejection (i.e.,
claims 1-5, 9, and 11), it is uncontested that Schreiber fails to teach an inlet
door hingedly attached to the thermal insulation, sealed by gravity, and
floatable to move to an open position as called for in claim 1. Ans. 6; App.
Br. 7. The Examiner relied on Hollmann to teach “an inlet door 15 that is
hingedly attached to the thermal insulation 37/38 (figure 1) and sealed
against a stop 39/31 on the thermal insulation 37/38 during normal operation
and floatable with a given buoyancy when immersed in a fluid to move to an
open position. . . .” Ans. 6.
Appellants argue that the Examiner’s reliance on Hollmann is
misplaced because “[t]he only thing that Hollmann contributes is that it
describes a hinged closure mechanism with no teaching of how such a
mechanism could be employed in the arrangement described in Schreiber et
al.” App. Br. 8 (arguing that Hollmann’s closure element 15 is hingedly
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connected to the flood pipe 31, not to the thermal insulation and that
Hollmann’s closure element 15 is not floatable with a given buoyancy when
immersed in a liquid to move to an open position).
Hollmann teaches using a hinged closure element 15 at an inlet to a
chamber 2 formed between a reactor vessel 3 and a thermal insulating
barrier 37. Hollmann’s closure element 15 includes a bale closure 16 that
acts through a bale 42 to press a cap 40 firmly into a ball sealing seat 39 of a
flood pipe 31. Hollmann, col. 7, ll. 63-66; fig. 4. The bale 42 is connected
to the flood pipe 31 by a hinge on the lower end and by a tightening screw
17, which has a melting bolt 43, on the upper end. Hollmann, col. 7, l. 66 –
col. 8, l. 1; fig. 4. The closure element 15 thus opens as a function of
temperature. Hollmann, col. 7, ll. 63-64. Based on this disclosure in
Hollmann, Appellants are correct that Hollmann’s closure element 15 is not
hingedly attached to the thermal insulation 37/38. Rather, Hollmann’s
closure element 15 is hingedly attached to the end of the flood pipe 31.
Also, Hollmann’s closure element 15 is designed to fall away from the flood
pipe 31 when the melting bolt 43 melts. We found no discussion in
Hollmann regarding the buoyancy of the closure element 15. Regardless of
any buoyancy Hollmann’s door may exhibit, due to the fact that the hinge is
located on the bottom of the door, the door is not “floatable . . . to an open
position.” As such, the Examiner incorrectly found that Hollmann’s closure
element 15 is “hingedly attached to the thermal insulation 37/38 (figure 1)
and sealed against a stop 39/31 on the thermal insulation 37/38 during
normal operation and floatable with a given buoyancy when immersed in a
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fluid to move to an open position.” Ans. 6. The Examiner’s findings as to
the teachings of Hollmann are not supported by a preponderance of the
evidence. Accordingly, we reverse the Examiner’s rejection of independent
claim 1 and its dependent claims 2-5, 9, and 11, under 35 U.S.C. § 103(a) as
unpatentable over Schreiber and Hollmann.
Rejection of claims 10 and 12 under 35 U.S.C. § 103(a) over Schreiber,
Hollmann, and Coomes and rejection of claim 17 under 35 U.S.C. § 103(a)
over Schreiber, Hollmann, and Clemens
Claims 10, 12, and 17 depend from independent claim 1. The
remaining grounds of rejection suffer from the same deficiency in the
Examiner’s findings as to the teaching of Hollmann, relied upon in the
rejection of claim 1. Ans. 12-14. The Examiner does not rely on either
Coomes or Clemens to teach an inlet door hingedly attached to the thermal
insulation and sealed by gravity and floatable with a given buoyancy when
immersed in a fluid to move to an open position, as called for in dependent
claim 1. Id. As such, we reverse the rejections of claims 10, 12, and 17
under 35 U.S.C. § 103(a) for the same reasons provided supra in our
analysis of claim 1.
CONCLUSIONS
The Examiner has not met the initial burden of setting forth a
reasonable explanation as to why the scope of protection provided by claim
14 is not adequately enabled by the description of the invention provided in
the Specification.
Hollmann does not teach an inlet door that is hingedly attached to the
thermal insulation and sealed against a stop on the thermal insulation during
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normal operation and floatable with a given buoyancy when immersed in a
fluid to move to an open position, as called for in claim 1.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-5 and
7-17.

REVERSED

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