Ex Parte Martin

Patent Trial and Appeal Board

May 29, 2018

13603184 (P.T.A.B. May. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/603, 184 09/04/2012
15624 7590 05/31/2018
Ryan Alley IP
(GE Docket)
P.O. Box 87
Alexandria, VA 22313
FIRST NAMED INVENTOR
Kathryn M. Martin
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.
5.0017.1 (24GA253975) 8768
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
05/31/2018 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):
office@alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KATHRYN M. MARTIN
Appeal2017-005123 1
Application 13/603, 184
Technology Center 3600
Before WILLIAM V. SAINDON, ERIC C. JESCHKE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellant appeals under 35 U.S.C. § 134(a) from a rejection of claims
1-18, 21, and 22. 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 ).
1 According to Appellant, the real party in interest is Global Nuclear Fuel -
Americas, LLC. Appeal Br. 1.
Appeal2017-005123
Application 13/603,184
CLAIMED SUBJECT MATTER
The claims are directed to nuclear fuel assembly spacers having
elastic deflection limiting components. Spec. ,r 4. Claim 21, reproduced
below, is illustrative of the claimed subject matter:
21. A fuel spacer for use in a nuclear fuel assembly, the
spacer compnsmg:
a plurality of internal members forming a plurality of
internal openings each configured to receive a fuel rod and
secure the fuel rod within the spacer, wherein each of the internal
members includes,
a rod contact having an elastic resistive member and a
corresponding deflection limiter, wherein the elastic resistive
member extends a first transverse length into the opening formed
by the internal member to contact the fuel rod passing through
the opening, wherein the corresponding deflection limiter
extends a second transverse length into the opening, and wherein
the second transverse length is shorter into the opening than the
first transverse length so that the corresponding deflection limiter
will not contact the fuel rod centered in the opening; and
a band surrounding the plurality of internal members.
Appeal Br. 21-22, Claims App'x. (emphasis added).
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Krawiec
Finch
Song
us 3,715,275
us 4,028,180
US 2007 /0242793 Al
2
Feb. 6, 1973
June 7, 1977
Oct. 18, 2007
Appeal2017-005123
Application 13/603,184
REJECTIONS
The Examiner made the following rejections:
I. Claims 21 and 22 stand rejected under 35 U.S.C. § 102(b) as being
anticipated by Finch.
II. Claims 1-3, 6-10, and 11-17 stand rejected under 35 U.S.C.
§ 102(b) as being anticipated by Song. 2
III. Claims 4 and 18 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over Song. 3
IV. Claim 5 stands rejected under 35 U.S.C. § 103(a) as being
unpatentable over Song and Krawiec.
OPINION
New Ground of Rejection
Pursuant to 37 C.F.R. § 4I.50(b), we enter a New Ground of Rejection
against claims 21 and 22 under 35 U.S.C. § 112, second paragraph. For the
reasons stated below, we determine claims 21 and 22 are indefinite.
Background
The invention is directed to a nuclear fuel rod assembly having a
plurality of internal members and internal openings. As shown below in an
2 The Examiner's rejections of claims 1-3 and 6-10 over Song and claims
11-17 also over Song are discussed together in this decision because both
rejections rely upon the same reference and the same code section.
3 The Examiner also cites to The Manual of Patent Examining Procedure
§ 2144.05(II) in support of this rejection.
3
Appeal2017-005123
Application 13/603,184
annotated and modified version of Figure 3 4, each spacer includes a plurality
of internal members and a plurality of openings.
Figure 3 is an illustration of one example of an embodiment of a nuclear fuel
rod spacer showing different gird openings 141 extending on both sides of
an internal member 142. See Spec. ,r 9, 23.
4 For clarity, we annotate this figure and the following figures.
4
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Application 13/603,184
Each internal member is generally defined as a sheet and includes an
elastic contact member 461 a and a deflection limiter 461 b as shown in
annotated Figure 4.
Figure 4 is an illustration of one example of one embodiment of a
specialized nuclear fuel rod contact. See id. ,r 10.
In operation, the fuel rods 14 are positioned to extend into the
openings 141 and are in contact with the elastic contact 461 a. The purpose
of the elastic contact is to resist or limit movement of the fuel rods 14 within
the openings. Id. ,r 23. Deflection limiter 461 b also extends outwardly from
the internal member 142. The purpose of the deflection limiter is to prevent
the elastic contact from plastically deforming. Id. ,r 27. Annotated Figure 5
5
Appeal2017-005123
Application 13/603,184
below illustrates the top view of the fuel rod, elastic contact, and deflection
limiter with the distance "d" indicating the spacing between the elastic
contact and the deflection limiter. Id. ,r,r 26-27.
E.lastic conta.ct
?
145
141
146
141
145
>
Figure 5 is a sectional illustration of one example of an embodiment of a
fuel spacer from an axial direction showing a detail of an example of an
embodiment of a specialized rod contact. See id. ,r 11.
Analysis
Claim 21 recites that the fuel spacer comprises "a plurality of internal
members forming a plurality of internal openings." The internal members
are indicated by reference numeral 142 and the internal openings are
indicated by reference numeral 141, as illustrated in Figure 3 above.
Further, claim 21 recites a rod contact (see reference numeral 146) having
one elastic resistive member ( 461 a) and a corresponding deflection limiter
( 461 b ), as illustrated in Figure 5 above. Claim 21 recites that "the elastic
resistive member extends a first transverse length into the opening formed
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Application 13/603,184
by the internal member." The definite article "the" indicates that there is
only one opening; however, the preceding passage in claim 21 recites "a
plurality of openings" (i.e. more than one opening). Thus, the use of the
article "the" does not assist us in determining which "opening" formed by
the internal member receives the elastic resistive member. Referring to
Appellant's Figure 3, the internal member indicated by reference numeral
142 is shown between two openings. As can be seen from Figure 4, the
internal member shows two sides, a visible side on the left hand portion of
Figure 4 and the reverse side that is not visible in the Figure. The internal
member's two sides thus help to define two separate openings on opposite
sides of the internal member, and as further illustrated, the elastic resistive
member only extends into one of the two openings. The claim requires the
elastic resistive member to extend into "the opening formed by the internal
member" ( emphasis added), but it cannot be determined which of the two
openings defined by the spacer is referred to by that phrase.
"[C]laims are required to be cast in clear-as opposed to ambiguous,
vague, indefinite-terms." In re Packard, 751 F.3d 1307, 1313 (Fed. Cir.
2014); see also In re Zietz, 893 F.2d 319, 322 (Fed. Cir 1989) ("the inquiry
during examination is patentability of the invention as 'the applicant
regards' it; and if the claims do not 'particularly point[ ] out and distinctly
claim[],' in the words of section 112, that which examination shows the
applicant is entitled to claim as his invention, the appropriate PTO action is
to reject the claims for that reason" (alterations in original) (citation and
footnote omitted)). As claim 21 lacks clarity for the reasons discussed
above, claim 21 is indefinite because it does not reasonably apprise those of
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Application 13/603,184
skill in the art of the scope of the claimed invention. Likewise, claim 22 is
also indefinite because it depends from claim 21.
Reiection I-The reiection o(claims 21 and 22 under 35 USC § 102(b) -
Finch
Having determined that claims 21 and 22 are indefinite for the reasons
discussed above, we cannot sustain the prior art rejections of these claims
because to do so would require speculation on our part as to the scope of the
claims. In re Aoyama, 656 F.3d 1293, 1300 (Fed. Cir. 2011) (holding that
the Board erred in affirming an anticipation rejection of indefinite claims);
In re Steele, 305 F.2d 859, 862-63 (CCPA 1962) (holding that the Board
erred in affirming a rejection of indefinite claims under 35 U.S.C. § 103(a),
because the rejection was based on speculative assumptions as to the
meaning of the claims). Accordingly, we reverse the rejection of claims 21
and 22 under 35 U.S.C. § 102(b) as anticipated by Finch. 5
Reiection II-The reiection o(claims 1-3 and 6-17 under 35 USC
§ 102(b) - Song
Appellant does not address the Examiner's rejections and in failing to
do so, fails to identify any reversible error. See Appeal Br. 9-16. We,
therefore, summarily sustain this rejection. See Hyatt v. Dudas, 551 F.3d
1307, 1314 (Fed. Cir. 2008) (explaining that summary affirmance without
5 It should be understood, however, that our decision to reverse is based
solely on the indefiniteness of the claimed subject matter, and does not
reflect on the adequacy of Finch as applied in the rejections.
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Application 13/603,184
consideration of the substantive merits is appropriate where an appellant
fails to contest a ground of rejection).
Reiection III-The reiection o(claims 4 and 18 under 35 US.C. § 103(a)-
Song
Claim 4
Claim 4 depends from claim 3, which likewise depends from claim 1.
Appeal Br. 17, Claims App'x. Accordingly, we will consider the limitations
of claims 1, 3, and 4 together because Appellant has only presented
arguments contesting the rejection of claim 4. Id. at 9, 12-16.
Claim 4 recites "wherein a difference between the transverse length of
the deflection limiter and the transverse length of the elastic resistive
member is approximately equal to a threshold for plastic deformation of the
elastic resistive member." Appeal Br. 17, Claims App'x. Rejecting claims 1
and 3, the Examiner finds that Song discloses, inter alia, a deflection limiter
(the upper dimple 119) and an elastic resistive member (spring 118). Final
Act. 3. The Examiner further finds that "the deflection limiter has a
transverse length shorter than the elastic resistive member such that the fuel
rod and elastic resistive member must move toward the internal member in
the transverse direction to contact the deflection limiter." Final Act. 3--4
(citing Song Figures 2-5). Specifically, the Examiner finds that Song does
not "disclose specific values for lengths of the components." Id. at 7.
However, the Examiner determines that the difference in the transverse
length of the deflection limiter and the transverse length of the elastic
resistive member "is a matter of optimization within prior art conditions or
through routine experimentation." Id. Based on this determination, the
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Application 13/603,184
Examiner reasons that "it would have been obvious through routine
experimentation and optimization, for one of ordinary skill in the art to
determine the optimal length of the deflection limiter and the elastic resistive
member." Id. at 8. The Examiner further supports this position by stating
"[ w ]hen the spring force is too high, each nuclear fuel rod 125 undergoes
defects such as scratching on the surface thereof due to excessive frictional
resistance when inserted into the spacer grid 11 O." Ans. 4.
Appellant argues that in Song "nothing is optimized by changing the
lengths of grid spring 118 and dimple 119 with respect to one another."
Appeal Br. 12. Appellant explains that "the combined thickness of two
opposite springs 118 and dimples 119 is not a length that matches anything
in the cell or otherwise serves any particular function in Song; indeed, it will
always be a distance beyond the thickness of spring 118 itself." Id. at 13.
We agree with Appellants that the cited aspects of the prior art do not
recognize, for example, the claimed difference in transverse length between
the deflection limiter and the elastic resistive member as a result-effective
variable.-i.e., "a variable which achieves a recognized result" (Manual of
Patenting Examining Procedure§ 2144.05(II)(B) (9th ed., Rev. 08.2017,
Jan. 2018)). See In re Antonie, 559 F.2d 618, 620 (CCPA 1977) ("The PTO
and the minority appear to argue that it would always be obvious for one of
ordinary skill in the art to try varying every parameter of a system in order to
optimize the effectiveness of the system even if there is no evidence in the
record that the prior art recognized that particular parameter affected the
result" (emphasis added)); see also In re Applied Materials, Inc., 692 F.3d
1289, 1295 (Fed. Cir. 2012) (discussing how the general rule from In re
Aller, 220 F.2d 454, 456 (CCPA 1955), "is limited to cases in which the
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Application 13/603,184
optimized variable is a 'result-effective variable[]' In re Antonie, 559 F .2d
618, 620 (CCPA 1977)"). The Examiner's finding that the claimed
difference is a "matter of optimization," therefore, is without sufficient
factual basis. Thus, we are not persuaded by the Examiner's rationale for
why it would have been obvious to optimize the claimed difference in
transverse length between the deflection limiter and the elastic resistive
member as a result-effective variable. See Final Act. 7-8. Accordingly, we
do not sustain the rejection of claim 4 under 35 U.S.C. § 103(a) as
unpatentable over Song.
Claim 18
Claim 18 contains limitations similar to claim 4 discussed supra.
Compare Appeal Br. 1 7, Claims App 'x. with id. at 21. The Examiner relies
on the same deficient reasoning with regard to Song discussed above in our
analysis of claim 4. Thus, for the same reasons, we do not sustain the
rejection of claim 18.
Reiection IV-The reiection o(claim 5 under 35 US.C. § 103(a) - Song and
Krawiec
Claim 5 depends from claim 3. Appeal Br. 18, Claims App'x.
Appellant does not address the Examiner's rejection and in failing to do so,
fails to identify any reversible error. See Appeal Br. 9-16. We, therefore,
summarily sustain this rejection. See Hyatt, 551 F.3d at 1314.
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DECISION
For the above reasons, the Examiner's rejections of claims 1-3 and 5-
1 7 are affirmed.
For the above reasons, the Examiner's rejections of claims 4, 18, 21,
and 22 are reversed.
We enter a new ground of rejection of claims 21 and 22 under
35 U.S.C. § 112, second paragraph, as being indefinite.
This Decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review." Section 4I.50(b) also provides:
When the Board enters such a non-final decision, the Appellant,
within two months from the date of the decision, must exercise
one of the following two options with respect to the new ground
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 reconsidered
by the examiner, in which event the prosecution will be
remanded to the examiner. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
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Application 13/603,184
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
AFFIRMED-IN-PART
37 C.F.R. § 4I.50(b)
13