Ex Parte OHSAKA

Patent Trial and Appeal Board

Jul 19, 2018

13914661 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/914,661 06/11/2013
21839 7590 07/23/2018
BUCHANAN, INGERSOLL & ROONEY PC
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
FIRST NAMED INVENTOR
Kenji OHSAKA
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.
1033318-000314 1051
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
ADIPDOC 1@BIPC.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KENJI OHSAKA
Appeal2017-003386
Application 13/914,661
Technology Center 3600
Before JOHN C. KERINS, GEORGE R. HOSKINS, and
SEAN P. O'HANLON, Administrative Patent Judges.
O'HANLON, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner's
decision, as set forth in the Final Office Action dated April 12, 2016 ("Final
Act."), rejecting claims 1 and 2 under 35 U.S.C. § 103(a) as being
unpatentable over Song (US 2005/0154478 Al, published July 14, 2005)
1 Appellant is the Applicant, Mitsubishi Electric Corporation, which,
according to the Appeal Brief, is the real party in interest. Appeal Br. 2.
Appeal2017-003386
Application 13/914,661
and Lunz (US 5,078,956, issued Jan. 7, 1992). We have jurisdiction over
this appeal under 35 U.S.C. § 6(b ).
We REVERSE.
SUMMARY OF THE INVENTION
Appellant's disclosure is directed to "a neutron flux mapping system"
for nuclear reactors. Spec. 1:8-12. Claim 1, the sole independent claim on
appeal, is reproduced below from page A-1 (Claims Appendix) of the
Appeal Brief:
1. A neutron flux mapping system placed inside a
containment vessel, for detecting a neutron flux distribution of
the inside of a reactor, the neutron flux mapping system
compnsmg:
a neutron detector for detecting the neutron flux
distribution of the inside of the reactor;
a drive cable connected to the neutron detector, for
moving the neutron detector;
a drive unit for driving the drive cable;
a plurality of guide thimbles provided being inserted
from the outside of the reactor into a plurality of sections inside
the reactor, for respectively inserting the neutron detector into
the plurality of sections inside the reactor;
a storage tube for storing the neutron detector outside the
reactor;
a path transfer device connected to the drive unit, for
selecting one of insertion of the neutron detector into each of
the guide thimbles and insertion of the neutron detector into the
storage tube;
a storage guide tube connecting the path transfer device
and the storage tube; and
an inspection guide tube connecting the drive unit to the
storage tube while bypassing the path transfer device, wherein
the drive unit has a switching unit for switching a path to
one of the path transfer device side and the inspection guide
tube side.
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Application 13/914,661
ANALYSIS
The Examiner finds that Song discloses a neutron flux mapping
system substantially as recited in independent claim 1, but "teaches a
'storage area,' not a 'storage tube,' and further lacks the redundant
inspection guide tube." Final Act. 5---6. The Examiner determines that
"[w]hile it is unclear whether Song's 'storage area' is comprised of tubes, it
is clear that such a variation would be obvious to anyone of ordinary skill in
the art." Id. at 6. Regarding the recited inspection guide tube, the Examiner
"notes that this element only provides an alternate path to the storage tube"
and determines that "[ o ]ne of ordinary skill would recognize the value of
providing such a redundant path in order to provide additional maintenance
on the device." Id. Therefore, according to the Examiner, such a skilled
artisan "would recognize the inspection tube to be nothing more than a
duplication" of Song's existing storage path. Id. at 6-7; see also id. at 3.
The Examiner also finds that Lunz teaches "such a feature" in calibration
path switch 34, which, according to the Examiner, "is useful for the purposes
of calibration." Id. at 7. Continuing, the Examiner determines that, because
"the use of multiple drive tubes provides redundancy that is useful in
maintenance," a skilled artisan "would further be motivated to combine the
calibration path bypass of Lunz with the system of Song to provide access to
the path selector during maintenance periods." Id. According to the
Examiner, Lunz's calibration path switch 34 teaches bypassing the path
transfer device. Ans. 7-8.
Appellant traverses, arguing, inter alia, that "[t]he claimed
requirement that the inspection guide tube connect the drive unit to the
storage tube while bypassing the path transfer device is more than
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Appeal2017-003386
Application 13/914,661
simply adding the inspection guide tube as a duplicate of the storage
guide tube." Appeal Br. 8. According to Appellant,
By bypassing the path transfer device, the inspection guide
tube provides a path for the drive cable to move the neutron
detector into the storage tube without passing through the
path transfer device so that the components in the path
transfer device can be safely inspected without exposure to
the neutron detector during a maintenance procedure ....
The claimed inspection guide tube is thus distinct from the
storage guide tube, rather than a "duplicate" of the storage
guide tube as alleged by the Examiner.
Id. at 9. Continuing, Appellant asserts that, "[a]bsent knowledge of the
present invention, there is no teaching in the references that would lead a
person of ordinary skill to modify the disparate devices in the manner
alleged [by] the Examiner to arrive at a workable embodiment of the
claimed subject matter." Id. at 10. We agree with Appellant.
The Examiner is correct to the extent that, in general, a mere
duplication of parts does not evidence patentability without a showing of a
new and unexpected result. See In re Harza, 274 F.2d 669, 671 (CCPA
1960) (holding that providing a plurality of ribs extending between a web
and an adjacent concrete slab is obvious in view of a prior art reference
showing one such rib). Here, however, the Examiner's modification is not a
duplication of an existing part. Rather, it is a duplication and modification
of an existing part, as the recited storage and inspection guide tubes are
connected between different components. Regarding the Song device, the
Examiner proposes to duplicate Song's "storage path" (see Final Act. 6-7),
which the Examiner defines as the tubing between Song's storage guider 360
and storage area 370. See id. at 6 (regarding the recited storage guide tube);
see also Song, Fig. 2b. A duplication of this tubing necessarily would also
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Appeal2017-003386
Application 13/914,661
extend between storage guider 360 and storage area 370. The recited storage
guide tube connects the path transfer device ( which the Examiner defines as
Song's path selection unit 300 (see Final Act. 6)) to the storage tube (which
the Examiner defines as Song's storage area 370 (see id.)). 2 Conversely, the
recited inspection guide tube connects the drive unit (which the Examiner
defines as Song's drivers 100 (see id. at 5)) to the storage tube while
bypassing the path transfer device ( which the Examiner defines as Song's
path selection unit 300 (see id. at 6)). Thus, the Examiner's reliance on
"duplication of parts" does not satisfy the requirements for a storage guide
tube and an inspection guide tube as recited in claim 1.
The Examiner also turns to Lunz's calibration path switch 34 to teach
the recited "bypassing" requirement of claim 1. Id. at 7; Ans. 7-8.
According to the Examiner, when Lunz's detector is fed to calibration path
switch 34 it cannot be fed through path selectors 30 and, therefore, the
detector "bypasses" path selectors 30. Id. at 8. We do not agree with the
Examiner's logic.
The Specification explains that, in normal operation, neutron detector
10 is stored in storage tube 9 by feeding it through storage guide tube 14,
which connects drive unit 1 to storage tube 9 through path transfer device 8.
Spec. 10:9-10, 13:17-14:3, Fig. 1. To allow for inspection of the path
transfer device, the neutron detector is instead fed through inspection guide
tube 15, which directly connects the drive unit to the storage tube without
2 We note that the Examiner-defined storage guide tube (the tubing between
Song's storage guider 360 and storage area 370) does not connect the path
transfer device (selection unit 300) and the storage tube (storage area 370) as
required by claim 1. See Song, Fig. 2b.
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Application 13/914,661
passing through the path transfer device. Id. at 10: 11-12, 14:24--16:5, 17:5-
18. Thus, to "bypass," the bypassing path must provide access to the same
end destination while omitting travel through an intermediate component.
Lunz does not disclose such bypassing. Rather, Lunz explains that
"[ e Jach six-path selector 28 selects one of four fifteen-path selectors ... , or
one of four detector storage conduits ... , or calibration path switch 34."
Lunz 2:35--40 (emphases added). Thus, Lunz's flux detectors can be
directed to one of three separate and unique end destinations: thimble guide
tubes 18 via fifteen-path selectors 30, storage conduits 32, or calibration path
switch 34. Lunz does not disclose additional paths to these destination
points, and, thus, does not disclose "bypassing" as the term is used in claim
I. See Appeal Br. 7-8.
Accordingly, for the foregoing reasons, we do not sustain the rejection
of claim 1, or its dependent claim 2, as being unpatentable over Song and
Lunz.
DECISION
The Examiner's decision to reject claims 1 and 2 reversed.
REVERSED
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