Ex Parte Reese et al

Patent Trial and Appeal Board

Mar 31, 2016

13192300 (P.T.A.B. Mar. 31, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/192,300 07/27/2011
73552 7590 04/04/2016
Schwabe, Williamson & Wyatt/SFC
1211 SW Fifth Ave.
Suite 1900
Portland, OR 97204
FIRST NAMED INVENTOR
Steven Richard REESE
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.
6984-0031 5736
EXAMINER
DA VIS, SHARON M
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
04/04/2016 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):
PTOMail@stofoco.com
stofoco@blackhillsip.com
stofocodocketing@schwabe.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte STEVEN RICHARD REESE, TODD STEPHEN PALMER,
STEPHEN TODD KELLER, and MADICKEN MUNK
Appeal2015-007038
Application 13/192,300
Technology Center 3600
Before JENNIFER D. BAHR, ANNETTE R. REIMERS, and
MICHAEL L. WOODS, Administrative Patent Judges.
REIMERS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Steven Richard Reese et al. (Appellants) appeal under 35 U.S.C.
§ 134(a) from the Examiner's decision to reject claims 1-9, 16-20, 24-28,
and 30-32. Claims 10-15, 21-23, and 29 have been canceled. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2015-007038
Application 13/192,300
CLAIMED SUBJECT MATTER
The claimed subject matter relates to an isotope production target.
Spec. Title, Abstract; Figs. 1, 3. Claims 1 and 16 are independent.
Claim 1 is illustrative of the claimed subject matter and recites:
1. An isotope production target, comprising:
an outer diameter wall;
an inner diameter wall located within the
outer diameter wall, wherein a top of both the inner
diameter wall and the outer diameter [wall] are
sealed together and a bottom of both the inner
diameter wall and the outer diameter [wall] are
sealed together to form a sealed chamber;
an isotope source comprising particles of
fissile material loosely placed between the inner
diameter wall and the outer diameter wall to
facilitate removal of the loosely placed particles of
fissile material after irradiation of the isotope
production target, wherein the loosely placed
particles of fissile material are in contact with each
other and interspersed with a plurality of voided
regions around each of the loosely placed particles
of fissile material in the sealed chamber to capture
fission gases released from the loosely placed
particles of fissile material due to the irradiation of
the isotope production target; and
a central region located within the inner
diameter wall, wherein the central region houses a
neutron thermalization volume.
2
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Application 13/192,300
REJECTIONS 1'2
I. Claim 25 stands rejected under 35 U.S.C. § 112, first paragraph, as
failing to comply with the enablement requirement.
II. Claims 1-9, 16-20, 24--28, and 30-32 stand rejected under 35 U.S.C.
§ 112, second paragraph, as indefinite for failing to particularly point out
and distinctly claim the subject matter which the inventor regards as the
invention.
III. Claim 25 stands rejected under 35 U.S.C. § 112, second paragraph, as
indefinite for failing to particularly point out and distinctly claim the
subject matter which the inventor regards as the invention.
IV. Claims 1-9, 16-20, 24--28, and 30-32 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Song (US 2007/0258556 Al, pub.
Nov. 8, 2007) in view of either Robson (US 3,833,469, iss. Sept. 3, 1974),
Motojima (US 4,017,583, iss. Apr. 12, 1977), lshitsuka. (EP 2 104 113 Al,
1 The Examiner has withdrawn the following rejections: (1) The rejection of
claims 18 and 27 under 35 U.S.C. § 112, first paragraph, as failing to comply
with the enablement requirement; (2) The rejection of claims 18 and 27 under
35 U.S.C. § 112, second paragraph, as indefinite for failing to particularly
point out and distinctly claim the subject matter which the inventor regards as
the invention; (3) The rejection of claims 1-9, 16-20, 24-28, and 30-32 under
35 U.S.C. § 102(b) as anticipated by or, in the alternative, under 35 U.S.C.
§ 103(a) as obvious over Hancox (WO 96/13038, pub. May 2, 1996). See
Ans. 15. The Examiner has also withdrawn "[t]he double patenting objection
of claim 16 and dependents thereof." See id.
2 The Examiner clarifies in the Answer that " [ c] laim 16 is not 'rejected' under
35 U.S.C. 112, sixth paragraph. The language in the final office action of
10/03/14 was merely intended to inform [Appellants] of the claim
interpretation for the 'means for' claim limitations." See id. at 16; see also
Br. 16-17.
3
Appeal2015-007038
Application 13/192,300
pub. Sept. 23, 2009), or Nagai (US 2010/0215137 Al, pub. Aug. 26,
2010). 3
ANALYSIS
Enablement
Claim 25
The Examiner determines that claim 25 does not comply with the
enablement requirement because "[t]he structure than (sic.) enables voided
regions to capture fission gases critical or essential to the practice of the
invention is not included in the claim(s)." Final Act. 8-9 (citation omitted).
The Examiner further determines that "[ v ]oided regions, i.e.[' ]the absence
of structure' cannot be configured for any particular purpose. Rather, it is
the means for housing that is configured to capture the fission gases." Ans.
15.
When rejecting a claim under the enablement requirement of
section 112, the PTO bears an initial burden of setting forth a
reasonable explanation as to \~\rhy 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). Here, the
Examiner failed to carry that burden. The rejection does not articulate why
the disclosure provides insufficient information to enable a skilled artisan to
make and use the invention without undue experimentation, such as by
3 The Examiner states: "[C]laims 18 and 27 are directed to non-elected
Invention III (see paragraph 1 of the Requirement for Restriction ofOl/14/14).
However, there does not appear to be a search burden with respect to the
subject matter of these claims, as the prior art Song includes the recited
features. Accordingly, the restriction requirement is not being enforced with
respect to these claims." Ans. 15.
4
Appeal2015-007038
Application 13/192,300
analysis of the Wands factors. See Final Act. 8-9; see also Ans. 15; Jn re
Wands, 858 F.2d 731, 737 (Fed. Cir. 1988). Further, we agree with
Appellants that "a region is not necessarily absent any structure, rather a
region can be defined by the surrounding structure, much as a room may be
bounded by four walls. That a region may be voided (e.g., empty), does not
require that the region itself is without structure." Br. 13. 4
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claim 25 under 35 U.S.C. § 112, first paragraph, for
lack of enablement.
Indefiniteness
Claims 1-9, 16--20, 24-28, and 30--32
The Examiner determines that (1) "The term 'loosely placed' in
claims 1, 2, 3, 4, 9, 16, 19, 20, 24, 25, 28, ... , 30, 31, and 32 is a relative
term which renders the claim indefinite"; and (2) "The term 'loosely' is not
defined by the claim, the specification does not provide a standard for
ascertaining the requisite degree, and one of ordinary skill in the art would
not be reasonably apprised of the scope of the invention." Final Act. 9; see
also Ans. 16. The Examiner further determines that "[ w ]ithout a definition
of the term-for example, by defining a volume ratio of particles within the
annular isotope production space of the target---one of ordinary skill in the
art would be unable to discern the scope of the invention." Final Act. 9.
Appellants' Specification describes that "the fissile material 3 6
illustrated in FIG. 3 may be loosely placed within the chamber 1 (FIG. 2) for
4 Appellants' Specification describes that "[t]he one or more voided regions
38 may be configured to capture fission product gases produced from the
fissile material 36." Spec. 4, 11. 1-2.
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Application 13/192,300
easy removal, e.g., by inverting the isotope target 10 with the first end 12
removed." Spec. 5, 11. 11-13. Appellants' Specification further describes:
In one example, the first layer 53 and the second layer 56
may be loosely fit within the target chamber 51, e.g., not adhered
to either the inner wall 54 or the outer wall 56, respectively.
Accordingly, the first layer 53 and the second layer 56 may be
physically removed from the target 40 without performing any
chemical or thermal treatment.
Id. at 8, 11. 26-29.
At the outset, we agree with Appellants that "defining a volume ratio
would not be dispositive to a determination as to whether the particles
are loosely placed; for example[,] particles which are chemically or
thermally fused to each other could still be associated with a particular
volume ratio, without necessarily being loosely placed." Br. 15. We further
agree with Appellants that, upon review of Appellants' disclosure, "one of
skill in the art would have no problem ascertaining the meaning of the
[phrase] 'loosely placed' or the scope of the invention." See id.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of claims 1-9, 16-20, 24--28, and 30-32 under
35 U.S.C. § 112, second paragraph, for indefiniteness.
Claim 25
The Examiner articulates an additional basis for rejecting claim 25 as
indefinite. Specifically, the Examiner determines that "[a] voided region,
per se, cannot be configured for any purpose, because a voided region is an
absence of structure. Rather, it must be the structure enclosing the voided
regions that can be configured to capture fission gases." Final Act. 10; see
also Ans. 15.
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Application 13/192,300
Appellants' Specification describes that "[t]he one or more voided
regions 3 8 may be configured to capture fission product gases produced
from the fissile material 36." Spec. 4, 11. 1-2. We agree with Appellants
that "a region is not necessarily absent any structure, rather a region can be
defined by the surrounding structure, much as a room may be bounded by
four walls. That a region may be voided (e.g., empty), does not require that
the region itself is without structure." Br. 13. Consequently, based on the
foregoing, a skilled artisan would understand what is claimed when read in
light of the Specification.
Accordingly, for the foregoing reasons, we also do not sustain the
Examiner's rejection of claim 25 under 35 U.S.C. § 112, second paragraph,
for indefiniteness under this second basis.
Obviousness
Claims 1-9, 16--20, 24-28, and 30--32
The Examiner finds that Song discloses the device of claim 1
substantially as claimed except for the isotope source. See Final Act. 21-
22. The Examiner turns to Robson, Motojima, Ishitsuka, or Nagai for
disclosure of the isotope source. See id. at 22. The Examiner concludes:
Id.
One of ordinary skill in the art at the time of the invention
would have found it obvious to substitute the particulate isotope
sources taught by Robson, Motojima, lshitsuka, and Nagai for
the annular fuel pellets of Song, disposing the particles between
the inner and outer diameter walls of Song because such a
combination is simply substituting one known element for
another to achieve predictable results, namely the irradiation of
the particulate isotope source in the isotope production target of
Song to produce desired radioisotopes, such as those useful in
medical therapy.
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Application 13/192,300
Appellants contend that "the proposed combination and modification
of Song would appear to make the apparatus of Song inoperable, or at least
unsuitable, for its intended purpose, since the removal of the gap would
preclude the ability of Song to provide control of the direction of heat flow
in the desired manner." Br. 20. Specifically, Appellants contend:
According to Song, prior art fuel rod designs resulted in
direct contact between annular fuel pellets as the gaps between
the pellets closed due to thermal expansion during operation of
the reactor (Song, paragraph 0020, Song [sic]). The transfer of
heat between fuel pellets due to this contact results in the stated
problem in Song of "excessive heat flux in the outer tube" (Song,
paragraph 0045). Song overcomes this problem by maintaining
an intermediate gap throughout operation of the fuel rod (Song,
paragraphs 0044 and 0045) in order to achieve a smaller
temperature gradient across the intermediate gap as compared to
the inner and outer gaps (paragraph 0046). This smaller
temperature gradient is required by Song to controllably direct
the heat inwardly and avoid excessive heat flux in the outer
cladding (Song, paragraph 0045).
Id. at 19. Appellants conclude:
[O]ne of skill in the art would not find it obvious to replace the
two annular pellets 121, 122 [of Song] with other types of fuel
elements/shapes, such as loosely placed particles, that would
preclude the existence of the intermediate gap 132 that Song
requires for control of the direction of heat flow, and therefore
change the principal of operation of Song.
Id. at 20.
In response to Appellants' arguments, the Examiner takes the
position:
In the obvious combination of the annular chamber of Song
with the particular fuel/irradiation target of the secondary
references, the annular gaps of Song are replaced by the gaps
between each of the fuel particles when the annular fuel pellets
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Application 13/192,300
are replaced with the particles of the secondary references.
Therefore, the combination cannot possibly ever encounter the
particular problem Song discloses. In the combination, the heat
flux will be directly equally inward and outward by the random
contact between the particles and the heat removal by the coolant
around and within the annular capsule will be effective.
Therefore, the proposed combination would operate in the same
way as the nuclear fuel rod of Song[.]
Ans. 17. The Examiner further takes the position:
The combination of an annular chamber with a particular
fuel/irradiation target would operate in exactly the same way.
The proposed combination further does not render Song
unsuitable for its intended purpose. The purpose of Song is to
generate heat by nuclear reactions and to direct the heat to the
inner and outer walls of the annular chamber. The combination
of an annular chamber with a particular fuel/irradiation target
would operate in exactly the same way.
Id. at 18.
Based on our understanding, the Examiner is proposing to replace the
annular fuel pellets of Song with loosely placed particles of fissile material,
as disclosed in either Robson, Motojima, Ishitsuka, or Nagai, and that in
such a combination, "the annular gaps of Song are replaced by the gaps
between each of the fuel particles." Final Act. 22. According to the
Examiner, the resulting combination "cannot possibly ever encounter the
particular problem [that] Song discloses," namely a fuel rod that overheats
due to "excessive heat flux in the outer tube." Id.; see also Ans. 17; Br. 21;
Song, para. 45; id. at paras. 15, 22, 23.
At the outset, we agree with Appellants that "[t]he thermal barrier or
gap that Song illustrates between the inner and outer fuel pellets is essential
to maintaining ... controlled directional heat flow." Br. 22; see also Song,
paras. 39--45. Appellants correctly point out that "[t]he random contact
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Application 13/192,300
between the particles that would result from the proposed combination
would indiscriminately form numerous heat conduction paths between the
inner and outer tubes of Song's fuel rod that would operate to provide
direct heat transfer between the tubes and from the particles contained
therein" and "[a]ny random 'gaps' which happen to exist between some of
adjacent particles would not create any thermal barrier to the transfer of
heat through the numerous conduction paths that form through adjacent
particles which do contact each other." Br. 21. We agree with Appellants
that "the Examiner's proposed combination would effectively remove the
smaller temperature gradient associated with Song's intermediate gap and
result in the outer cladding receiving an excessive heat flux and
overheating." Id. at 22. We further agree with Appellants that the
Examiner's proposed combination would fail "to direct heat to the inner
and outer walls of the annular chamber," and would instead "cause Song's
fuel rod to lose the ability to control the direction of heat." See id.
(emphasis omitted); see also Ans. 18. As such, we agree with Appellants
that the Examiner's proposed combination and modification of Song would
render Song's device inoperable for its intended purpose. See Br. 20-22.
Where the proposed modification would render the prior art invention
being modified unsatisfactory for its intended purpose, the proposed
modification would not have been obvious. See Tee Air, Inc. v. Denso Mfg.
Mich., Inc., 192 F.3d 1353, 1360 (Fed. Cir. 1999); In re Gordon, 733 F.2d
900, 902 (Fed. Cir. 1984).
Independent claim 16 includes similar limitations as discussed for
claim 1. See Br., Claims App. 2-3. The Examiner relies on the same
unsupported findings for claim 16 as discussed above in claim 1. See Final
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Application 13/192,300
Act. 25-27; see also id. at 21-23. Thus, the Examiner's findings with
respect to Song, Robson, Motojima, Ishitsuka, and Nagai are deficient for
claim 16 as well.
Accordingly, for the foregoing reasons, we do not sustain the
Examiner's rejection of independent claims 1and16 and their respective
dependent claims 2-9, 17-20, 24--28, and 30-32 as unpatentable over Song
and either Robson, Motojima, Ishitsuka, or Nagai.
DECISION
We REVERSE the decision of the Examiner to reject claims 1-9, 16-
20, 24--28, and 30-32.
REVERSED
11