Ex Parte McWhirter et al

Patent Trial and Appeal Board

Jun 22, 2016

12565402 (P.T.A.B. Jun. 22, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/565,402 0912312009
92446 7590 06/24/2016
TerraPower
Wolf, Greenfield & Sacks, P.C.
600 Atlantic A venue
Boston, MA 02210-2206
FIRST NAMED INVENTOR
Jon D. McWhirter
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.
T2091.70003US00/013-000 1398
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):
Patents_eOfficeAction@WolfGreenfield.com
T209 l_eOfficeAction@WolfGreenfield.com
docketing@terrapower.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte JON D. McWHIRTER, CHARLES WHITMER,
LOWELL L. WOOD, JR. and GEORGE B. ZIMMERMAN
Appeal2014-001624
Application 12/565,402
Technology Center 3600
Before JOHN C. KERINS, MICHAEL L. HOELTER, and JILL D. HILL,
Administrative Patent Judges.
HILL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Jon D. McWhirter et al. (Appellants) appeal under 35 U.S.C. § 134
from the Examiner's final decision rejecting claims 1, 3---6, 8, 12-18, 29, 31,
37, 45--48, 57, 65, and 66. 1 We have jurisdiction under 35 U.S.C. § 6(b).
1 Claims 19-28, 36, 38--40, 42--44, 52, 54, 55, 58---64, 67, 68, 71, 72, 74,
76-89, 92, 94--104, 106, 109, 113, and 114 have been canceled. Appeal Br.,
Claims App. Claims 2, 7, 9-11, 30, 32-35, 41, 49-51, 53, 56, 69, 70, 73,
75, 90, 91, 93, 105, 107, 108, and 110-112 have been withdrawn from
consideration. Id. Although Appellants requested rejoinder of claims 2, 7,
9-11, 30, 32-35, 41, 49-51, 53, and 56 in the Amendment dated October 26,
2012, these non-elected claims have not been rejoined, at least because the
Appeal2014-001624
Application 12/565,402
We REVERSE.
CLAIMED SUBJECT MATTER
Sole independent claim 1 is reproduced below and represents the
claimed subject matter.
1. A method for determining respective amounts of
materials in a first cell, said first cell including a plurality of
principal materials, the method comprising:
(a) selecting a neighbor to a principal material in said
first cell, wherein said selected neighbor is one of a plurality of
agent materials;
(b) determining a proxy amount of said selected neighbor
for said first cell, wherein said proxy amount represents an
amount of said selected neighbor that approximates a
macroscopic property of said principal material as a function of
an amount of said principal material in said first cell;
( c) performing acts (a) and (b) for each principal material
of the plurality of principal materials in said first cell; and
( d) determining a summed proxy amount of each agent
material for said first cell by summing agent material proxy
amounts associated with said each agent material.
Appeal Br. 27, Claims App.
REJECTIONS
I. Claims 1, 3---6, 8, 12-18, 29, 31, 37, 45--48, 57, 65 and 66 stand
rejected under 35 U.S.C. § 112, i-f 1, as failing to comply with the
enablement requirement. Ans. 2.
II. Claims 1, 3---6, 8, 12-18, 29, 31, 37, 45--48, 57, 65 and 66 stand
rejected under 35 U.S.C. § 112, i-f 2, as being indefinite for failing to
claims directed to the elected invention are not in condition for allowance.
See MPEP § 821.04.
2
Appeal2014-001624
Application 12/565,402
particularly point out and distinctly claim the subject matter that applicant
regards as the invention. Ans. 2.
III. Claims 1, 6, 8, 13, 16-18, 29, 31, 37, 45--48, 57, 65 and 66
stand rejected under 35 U.S.C. § 102(b) as anticipated by Teller et al.,
Completely Automated Nuclear Power Reactors for Long-Term Operation:
Ill. Enabling Technology for Large-Scale, Low-Risk Affordable Nuclear
Electricity, November 30, 2003, U.S. Department of Energy, Lawrence
Livermore National Laboratory, pp. 1-59). Ans. 2.
IV. Claim 12 stands rejected under 35 U.S.C. 103(a) as
unpatentable over Teller and Chiang (US 2004/0009455 Al, pub. Jan. 15,
2004 ). Ans. 3.
V. Claims 14 and 15 stand rejected under 35 U.S.C. 103(a) as
unpatentable over Teller and MPEP § 2144.04(IV)(A). Ans. 3.
OPil...JION
Rejection I - Enablement
The Examiner finds that the terms "principal materials" (recited in
claim 1 ), "agent materials" (recited in claim 1 ), "fictional material" (first
recited in claim 3), "acceptably characterized" (first recited in claim 2), and
"neighbor" (recited in claim 1) are not described sufficiently to enable a
person skilled in the art to make or use the claimed invention. Final Act 7;
Ans. 4. According to the Examiner, an undue amount of experimentation
would be required to make and use the claimed invention due to the lack of
direction in the Specification. Ans. 4.
Appellants argue that the enablement rejection is "legally deficient" in
failing to address each of the Wands factors. Appeal Br. 11 (citing MPEP §
3
Appeal2014-001624
Application 12/565,402
2164(a); Jn re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)). The Examiner
disagrees, arguing that it is not necessary to discuss each of the Wands
factors in an enablement rejection. Ans. 4.
The Examiner's determination that "undue experimentation" would be
needed to make and use the claimed invention (Ans. 4) is not a simple
factual determination. Rather, it is a conclusion that must be reached by
weighing evidence relevant to the Wands factors. See In re Wands, 858 F.2d
at 737. Even assuming that not all of the Wands factors need be addressed,
the Examiner has failed to provide sufficient analysis evidencing why the
lack of definitions of certain terms in the Specification results in undue
experimentation being needed to make or use the claimed invention. Simply
stating that undue experimentation is needed does not amount to a proper
analysis of the Wands factors.
Lacking any findings resulting from a proper analysis of the Wands
factors, we do not sustain Rejection I.
Rejection II - Indefiniteness
Regarding claim 1, the Examiner finds that the Specification does not
clearly define the terms "principal materials," "agent materials," and
"neighbor," such that it is "not possible to determine the metes and bounds
of the claim." Final Act. 8.
Principal Material
According to Appellants' Specification, "'[a] principal material is a
material of one or more materials in a reactor or reactor cell that may be
represented by an agent material."' Id. at 7 (citing Spec. i-f 229). The
Specification also states that "[p ]rincipal materials ... may be fission
products." Reply Br. 2 (citing Spec. i-f 229). Indeed, the Specification
4
Appeal2014-001624
Application 12/565,402
makes clear that principal materials include fission products such as
"elements, isotopes, and I or isomers of isotopes." Spec. i-f 229. This
provides a sufficient definition, particularly to one skilled in the art. We
therefore agree with Appellants that the term principal materials particularly
points out and distinctly claims the subject matter that Appellants regard as
the invention.
Agent Material
To define the term "agent material," Appellants refer to claim 2,
which recites "an agent material . .. is an isotope having a plurality of
acceptably characterized microscopic properties of interest." Reply Br. 3.
Appellants contend that an agent material is therefore defined as a material
that is "'typically well-characterized with regard to pertinent microscopic
cross sectional data." Id.
The Examiner, however, also finds that "acceptably characterized
microscopic properties;" proffered by Appellants as defining the term "agent
material," is indefinite. Appeal Br. 7-8. Because such "properties" form
part of the definition of the term "agent material" proffered by Appellants,
the alleged indefiniteness of the term "acceptably characterized microscopic
properties" becomes relevant to claim 1 via its relevance to the definition of
"agent material."
Appellants argue that "[t]he meaning of acceptably characterized
property would be discernible to one of ordinary skill in the art by the plain
language of the claims in light of the [S]pecification." Appeal Br. 7. In
proffering a definition of the term, Appellants refer to the Specification's
disclosure that "[p ]erforming accurate Monte Carlo calculations on volumes
having a population of isotopes not having completely known or well-
5
Appeal2014-001624
Application 12/565,402
characterized properties such as neutron cross-sections is ... ditlicult," and
"even if all the cross sectional data for each and every material was well
characterized .... " Id. (citing Spec. i-f 79). Based on this disclosure,
characterized properties encompass, at a minimum, "neutron cross sections"
or other "cross sectional data."
An agent material can therefore be defined, given the disclosure of
claim 2 and paragraph 79, as an isotope having a plurality of known (or
acceptably characterized) cross sectional data, which is used in place of a
principal material (particularly if the principal material includes short-lived
isotopes for which cross sectional data is unknown) in simulation
calculations to reduce the computational burden of computer simulations of
reactor core behavior.
We therefore agree with Appellants that the term "agent material"
particularly points out and distinctly claims the subject matter that
Appellants regard as the invention.
Neighbor
Regarding the interrelation of the terms "principal material," "agent
material," and neighbor, Appellants explain that a principal material may not
be "well-characterized with respect to a microscopic property such as
microscopic cross sectional data," which is why a neighbor, which includes
one of a plurality of agent materials, is selected. Reply Br. 2-3.
According to Appellants, the Specification sufficiently defines the
term "neighbor" in stating:
A neighbor may be chosen to act as the agent for the principal
on one or more of many criteria. Typically, a neighbor has
microscopic properties such that a certain density of the
neighbor will have similar macroscopic properties as the
6
Appeal2014-001624
Application 12/565,402
existing density of the principal. Thus, a neighbor may be
selected to act as an agent for the principal based on a
comparison of microscopic properties of the principal to the
microscopic properties of each of the neighbors.
Reply Br. 3 (citing Spec. i-f 229).
Given the above definitions of "principal material" and "agent
material," one skilled in the art would understand from the disclosure
regarding the interrelation of the principal material, the agent material, and
the neighbor, that principal materials are actual materials in the reactor
whose characteristics may be unknown, agent materials are other materials
with known characteristics that are used in place of principal materials in
calculations for computer simulations of reactor core behavior, and the term
"neighbor" refers to the agent material that is selected to represent the
principal material in the computer simulations.
We therefore agree with Appellants that the term "neighbor"
particularly points out and distinctly claims the subject matter that
Appellants regard as the invention. We do not sustain Rejection II.
Rejection III - Anticipation
Regarding sole independent claim 1, the Examiner finds that Teller
discloses:
(1) "selecting a neighbor to a principal material" via its discussion of
"different spatial zones" and "homogenized materials" (Final Act 9; Ans. 6
(citing Teller, p. 23, i-f 3));
(2) the selected neighbor being "one of a plurality of agent materials"
via its discussion of "[s]ixteen isotopes being carded in each zone" (Id.);
(3) determining a proxy amount of the selected neighbor, the proxy
amount representing an amount of the neighbor "that approximates a
7
Appeal2014-001624
Application 12/565,402
macroscopic property of said principal material" via its discussion of an
"isotopic fraction" and "neutron absorption" (Id. (citing Teller, p. 23, i-f 4));
( 4) selecting a neighbor and determining a proxy amount thereof for
each principal material in the first cell, via its statement that "[t]he newly
updated isotopic abundances in each zone are then inputted as a newly
reformulated 'problem' ... for another cycle of neutron transport and reaction
calculations" (Id. (citing Teller, p. 24, i-f 1)).
Appellants argue that the enablement and definiteness rejections
evidence the Examiner's misunderstanding of the claim, which caused the
Examiner to err in finding, in Teller, analogues to the claimed principal and
agent materials, and neighbor. Appeal Br. 15. To illustrate the discrepancy
between the claimed limitations and the Examiner's findings regarding
Teller, Appellants provide a chart that maps the limitations of claim 1 to the
portion of Teller cited by the Examiner. Appeal Br. 16-17. Indeed,
Appellants' chart makes clear that the Examiner's findings fall short of
establishing anticipation. For example, the Examiner does not explain ( 1)
why Teller's "different spatial zones" teach selecting a neighbor, (2) why
models employing homogenized material teaches selecting a neighbor to a
principal material, (3) the relationship between sixteen isotopes carded in
each zone and the selected neighbor being an agent material, and ( 4) why an
"isotopic fraction" is a proxy amount. We therefore do not sustain Rejection
III.
Rejections IV and V
Claims 12, 14, and 15 depend from claim 1. The Examiner makes no
finding that Chiang (or intended use considerations) cures the deficiencies of
Teller set forth above, or that such deficiencies are obviated by intended use
8
Appeal2014-001624
Application 12/565,402
considerations. We therefore do not sustain Rejections l V and V for the
reasons set forth above regarding Rejection III.
DECISION
We REVERSE the rejection of claims 1, 3---6, 8, 12-18, 29, 31, 37,
45--48, 57, 65 and 66 under 35 U.S.C. § 112, i-f 1.
We REVERSE the rejection of claims 1, 3---6, 8, 12-18, 29, 31, 37,
45--48, 57, 65 and 66 under 35 U.S.C. § 112, i-f 2.
We REVERSE the rejection of claims 1, 6, 8, 13, 16-18, 29, 31, 37,
45--48, 57, 65 and 66 under 35 U.S.C. § 102(b) as anticipated by Teller.
We REVERSE the rejection of claim 12 under 35 U.S.C. 103(a) as
unpatentable over Teller and Chiang.
We REVERSE the rejection of claims 14 and 15 under 35 U.S.C.
103(a) as unpatentable over Teller and MPEP § 2144.04(IV)(A).
REVERSED
9