Ex Parte No Data

Board of Patent Appeals and Interferences

May 12, 2006

90005589 (B.P.A.I. May. 12, 2006)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

Paper 38

UNITED STATES PATENT AND TRADEMARK OFFICE
_____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________

Ex parte Framatome ANP
_____________
Appeal No. 2006-0009
Reexamination Control No. 90/005,589
______________

ON BRIEF
_______________

Before CAROFF, HANLON, and GAUDETTE, Administrative Patent Judges.

HANLON, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the final rejection of appellant’s
claims 1-4 in the patent reexamination proceeding. Claims 5-8 are also subject to reexamination.
However, the examiner has indicated that claims 5-8 are patentable. See Final Office action
mailed March 28, 2002.
Claims 1-4 are directed to a zirconium-base alloy. Claim 1 is illustrative of the subject
matter on appeal:
1. A tube of zirconium-base alloy for constituting all or the outside portion of cladding for a
nuclear fuel rod or of a guide tube for a nuclear fuel assembly, made of a zirconium-base alloy
containing, by weight,

0.8% to 1.8% niobium,
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0.2% to 0.6% tin, and
0.02% to 0.4% iron, plus inevitable impurities, and having a carbon content
controlled to lie in the range 30 ppm to 180 ppm, a silicon content in the range 10 ppm to 120
ppm, and an oxygen content in the range 600 ppm to 1800 ppm.

References relied on by the examiner
Sabol et al. (Sabol) 4,649,023 March 10, 1987

Anada et al. (Anada) JP 63-145735 June 17, 1988
(Published Japanese Kokai Patent Application)

Van Swam et al. (Van Swam) EP 0 533 073 A1 March 24, 1993

Rejections on appeal
(1) Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Van Swam.
(2) Claims 1-4 are rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Sabol.
(3) Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by or, in the alternative,
under 35 U.S.C. § 103(a) as obvious over Anada.
Discussion
A. Rejection based on Van Swam
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Van Swam. See Answer
at 3. The appellant argues that the rejection should be withdrawn because Van Swam was cited
during the original examination of the patent. The appellant relies on MPEP § 2258 for support.
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See Brief at 4-6.1

1 Reference herein to the “Brief” is to the “APPEAL BRIEF PURSUANT TO 37 C.F.R.
§ 1.192(a)” dated January 21, 2003.
According to MPEP § 2258 (7th ed., Jul. 1998):
A. Previously Considered Prior Art Patents Or Printed Publications
After reexamination is ordered based on a proper substantial new question
of patentability, a ground of rejection based wholly on prior art previously
considered by the Office (in an earlier examination of the patent) may not be
raised by the examiner. In re Recreative Technologies, 83 F.3d 1394, 38 USPQ2d
1776 (Fed. Cir. 1996). In deciding whether to make a rejection of the claims, the
consideration to be given to prior art patents or printed publications cited in an
earlier examination is controlled by In re Portola Packaging Inc., 110 F.3d 786,
42 USPQ2d 1295 (Fed. Cir. 1997).
In In re Portola Packaging, Inc., 110 F.3d 786, 790-91, 42 USPQ2d 1295, 1299 (Fed. Cir.
1997), the Court explained that:
[R]eexamination of the same claims in light of the same references does not raise
a substantial new question of patentability, which is the statutory criterion for
reexamination.
Congress intended that on reexamination a patent holder would not have
to argue that claims were valid over the same references that had been considered
by the PTO during the original examination.

Thus, the Court held:
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[A] rejection made during reexamination does not raise a substantial new question
of patentability if it is supported only by prior art previously considered by the
PTO in relation to the same or broader claims.
Id. at 791, 42 USPQ2d at 1300; cf. In re Bass, 314 F.3d 575, 577, 65 USPQ2d 1156, 1157 (Fed.
Cir. 2002) (consideration of references from first reexamination permitted in second
reexamination because the references had not been reviewed in a completed prior proceeding).

In the rejection before us, the examiner relies solely on Van Swam. A review of the
image file wrapper of Application 09/000,1042 reveals that Van Swam was previously
considered by the Office. See PTO-1449 considered March 1999. Furthermore, claim 1 in U.S.
Patent No. 5,940,464 and claim 1 on appeal are the same. Therefore, the rejection of claim 1
under 35 U.S.C. § 102(b) as being anticipated by Van Swam does not raise a substantial new
question of patentability. For this reason, the rejection is reversed.
B. Rejection based on Sabol
Claims 1-4 are rejected under 35 U.S.C. § 102(b) as anticipated by Sabol. Sabol
describes a tube of zirconium alloy which may be used to fabricate nuclear fuel cladding for a
fuel rod. See Sabol at col. 3, line 33-col. 4, line 56. Articles formed from the disclosed alloy are

2 Application 09/000,104 matured into U.S. Patent No. 5,940,464, the claims of which
are subject to the instant reexamination proceeding.
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said to exhibit both excellent corrosion resistance to aqueous environments at elevated
temperatures and hydriding resistance. The zirconium alloy contains 0.5 to 2.0% niobium, up to
1.5% tin and up to about 0.25% of a third alloying element such as iron. Sabol at col. 2, lines 8-
14. Thus, the amounts of niobium, tin and iron in the alloy are not limited to amounts of
niobium, tin and iron within the ranges recited in appellant’s claim 1. See appellant’s claim 1
(alloy contains 0.8% to 1.8% niobium, 0.2% to 0.6% tin and 0.02% to 0.4% iron).
Sabol also describes an example of a zirconium alloy in accordance with the disclosed
invention which comprises 1 weight percent niobium, 1 weight percent tin, 1 weight percent
iron, 1000-1600 ppm oxygen, 120 ppm carbon and 80 ppm silicon. Sabol at cols. 5-6, Table IV.
However, the amounts of tin and iron in the alloy are outside the ranges of tin and iron recited in
appellant’s claim 1.
Since Sabol does not expressly describe an example of a zirconium alloy comprising
amounts of niobium, tin, iron, carbon, silicon and oxygen within the ranges of niobium, tin, iron,
carbon, silicon and oxygen recited in claim 1, Sabol does not anticipate claim 1. See Minnesota
Mining and Mfg. Co. v. Johnson & Johnson Orthopaedics, Inc., 976 F.2d 1559, 1572, 24
USPQ2d 1321, 1332 (Fed. Cir. 1992) (to anticipate, a reference must sufficiently describe the
claimed invention to have placed the public in possession of it). Therefore, the rejection of claim
1 under 35 U.S.C. § 102(b) as anticipated by Sabol is reversed.
Claims 2-4 depend from claim 1. Therefore, the rejection of claims 2-4 under 35 U.S.C.
§ 102(b) as anticipated by Sabol is also reversed. See 37 CFR § 1.75(c) (1999) (“Claims in
dependent form shall be construed to include all the limitations of the claim incorporated by
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reference into the dependent claim.”).
Claims 1-4 are also rejected under 35 U.S.C. § 103(a) as obvious over Sabol. Although
Sabol does not expressly describe an example of a zirconium alloy comprising amounts of
niobium, tin, iron, carbon, silicon and oxygen within the ranges recited in claim 1, Sabol does
describe a zirconium alloy comprising amounts of niobium, tin and iron which overlap the
claimed ranges. Compare Sabol at col. 2, lines 54-59 with appellant’s claim 1. See In re
Wertheim, 541 F.2d 257, 267, 191 USPQ 90, 100 (CCPA 1976) (where the difference between
the claimed invention and the prior art is overlapping ranges, the appellant must show that the
particular ranges are critical). Sabol also indicates that a zirconium alloy in accordance with the
disclosed invention would contain amounts of carbon, oxygen and silicon within the ranges of
carbon, oxygen and silicon recited in appellant’s claim 1. See Sabol at cols. 5-6, Table IV.
In its brief, the appellant focuses its arguments on the range of tin disclosed in Sabol, i.e.,
“up to 1.5 percent tin.” See Brief at 11-12. The examiner correctly points out that the phrase
“up to” includes zero. Answer at 4. This range (up to 1.5%) encompasses the range of tin
recited in claim 1 (0.2% to 0.6%). However, the appellant argues that the teachings of Sabol as a
whole would have led one of ordinary skill in the art away from the tin concentration recited in
claim 1. For support, the appellant relies on the following passage in Sabol at column 2, lines
59-65:
While tin and the third alloying element are present in an amount up to the
percentages by weight listed, the minimum amount present would be that
sufficient to give the desired corrosion resistance in the articles produced
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therefrom. Preferably the alloy contains . . . about 1 percent by weight tin.
The appellant argues that this passage would have suggested to one of ordinary skill in the art
that an amount of tin below one percent should be avoided. See Brief at 11-12.
We disagree. A reference is not limited to a preferred embodiment or a specific example
but rather must be considered for all that it expressly teaches and fairly suggests to one having
ordinary skill in the art. In re Lamberti, 545 F.2d 747, 750, 192 USPQ 278, 280 (CCPA 1976).
In this case, Sabol indicates that the amount of tin in the disclosed zirconium alloy may be “up
to” 1.5% and “the minimum amount present would be that sufficient to give the desired
corrosion resistance in the articles produced therefrom.” Sabol discloses that one percent tin is a
preferred amount. However, nothing in Sabol suggests that an amount of tin as low as 0.6%
would not provide the “desired corrosion resistance.” See appellant’s claim 1 (reciting 0.2% to
0.6% tin).
To the extent that the appellant is relying on certain publications attached to the
amendment after final (Paper 22) to establish that the tin concentration recited in claim 1 is not
obvious, the amendment after final was not entered by the examiner. See Advisory Action
(Paper 26). Therefore, the publications are not properly before us and will not be considered on
appeal.
For the reasons set forth above, the zirconium alloy recited in claim 1 would have been
prima facie obvious. Therefore, the rejection of claim 1 under 35 U.S.C. § 103(a) as obvious
over Sabol is affirmed.
In claim 2, the alloy is in recrystallized state, and in claim 3, the alloy is in relaxed state.
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According to the appellant’s specification (col. 2, lines 25-28):
In general, the final heat treatment is performed in the range 560°C. to
620°C. when the alloy is to be in recrystallized state, and in the range 470°C. to
500° C. when the tube is to be used in relaxed state.
Sabol discloses that a final anneal is performed below 650°C., and preferably around
500°C. Sabol at col. 2, lines 22-24. According to Sabol, Figures 2A, B, C and D illustrate a
zirconium alloy tubing that has been stress-relief-annealed with a final anneal at 480°C., and
Figures 3A, B, C and D illustrate tubing of the same alloy that has been fully annealed at about
590°C. Sabol at col. 5, lines 13-20. Thus, the alloy illustrated in Figures 2A, B, C and D would
be expected to be in relaxed state, and the alloy illustrated in Figures 3A, B, C and D would be
expected to be in recrystallized state. Appellant has failed to establish otherwise. See In re Best,
562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA 1977) (where the claimed and prior art
products are produced by identical or substantially identical processes, the PTO can require an
applicant to prove that the prior art products do not necessarily or inherently possess the
characteristics of the claimed product). Therefore, the rejection of claims 2 and 3 under 35
U.S.C. § 103(a) as obvious over Sabol is also affirmed.
Claim 4 is dependent on claim 1. The appellant has not addressed the patentability of
claim 4 separately. See Brief at 4. Therefore, the rejection of claim 4 under 35 U.S.C. § 103(a)
as obvious over Sabol is also affirmed.
C. Rejection based on Anada
Claim 1 is rejected under 35 U.S.C. § 102(b) as anticipated by Anada. Anada discloses a
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zirconium alloy comprising 0.1-1.2 weight percent niobium, 0.2-1.2 weight percent tin, less than
0.25 weight percent iron and the remainder zirconium and impurities. Anada at 1.3 The
amounts of niobium, tin and iron in the alloy are not limited to amounts of niobium, tin and iron
within the ranges recited in appellant’s claim 1. Furthermore, Anada does not disclose that the
zirconium alloy has a carbon, silicon and oxygen content within the ranges recited in appellant’s
claim 1.4 See Verdegaal Bros., Inc. v. Union Oil Co., 814 F.2d 628, 631, 2 USPQ2d 1051, 1053
(Fed. Cir. 1987) ("A claim is anticipated only if each and every element as set forth in the claim
is found, either expressly or inherently described, in a single prior art reference."). For these
reasons, the rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Anada is reversed.

3 Reference herein to Anada is to the English translation of record in the reexamination
file.
4 The examiner appears to recognize that Anada does not disclose the claimed carbon,
silicon and oxygen contents. See Answer at 9 (“Anada discloses all but the claimed impurity
levels”).
Claim 1 is also rejected under 35 U.S.C. § 103(a) as obvious over Anada. However, the
examiner has failed to explain why the teachings of Anada render the claimed carbon, silicon
and oxygen contents obvious. See In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984) ("The mere fact that the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the desirability of the modification."). For
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this reason, the rejection of claim 1 under 35 U.S.C. § 103(a) as being obvious over Anada is
also reversed.
To the extent that the examiner is relying on Van Swam to supplement the teachings of
Anada, Van Swam is not included in the statement of the rejection. Therefore, we decline to
consider the teachings of Van Swam in combination with Anada. See In re Hoch, 428 F.2d
1341, 1342 n.3, 166 USPQ 406, 407 n.3 (CCPA 1970) (where a reference is relied on to support
a rejection, whether or not in a “minor capacity,” there would appear to be no excuse for not
positively including the reference in the statement of the rejection).
Conclusion
The rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by Van Swam is
reversed. The rejection of claim 1 under 35 U.S.C. § 102(b) as anticipated by or, in the
alternative, under 35 U.S.C. § 103(a) as obvious over Anada is reversed. The rejection of claims
1-4 under 35 U.S.C. § 102(b) as anticipated by Sabol is reversed. The rejection of claims 1-4
under 35 U.S.C. § 103(a) as obvious over Sabol is affirmed.

No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
AFFIRMED

Appeal No. 2006-0009 11
Reexamination Control No. 90/005,589

MARC L. CAROFF )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
ADRIENE LEPIANE HANLON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
LINDA M. GAUDETTE )
Administrative Patent Judge )

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