Ex Parte Roit et al

Patent Trial and Appeal Board

Jun 8, 2016

12629337 (P.T.A.B. Jun. 8, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/629,337 12/02/2009
15624 7590 06/10/2016
Ryan Alley Intellectual Property Law
P.O. Box 3698
Arlington, VA 22203
FIRST NAMED INVENTOR
Willard J. Roit
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.
5.0010.1 (24ES235260) 7651
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
06/10/2016 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):
office@alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte WILLARD J. ROIT and
MARTIN F. BADEWITZ, JR.
Appeal2013-002291
Application 12/629,337
Technology Center 3600
Before LINDA E. HORNER, LYNNE H. BROWNE, and
PAUL J. KORNICZKY, Administrative Patent Judges.
BROWNE, Administrative Patent Judge.
DECISION ON .,A .. PPE.,A .. L
STATEMENT OF THE CASE
Willard J. Roit and Martin F. Badewitz, Jr. (Appellants) appeal under
35 U.S.C. § 134 from the rejection of claims 1, 3-6, 10, 11, 13-15, and 18-
22. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
Appeal2013-002291
Application 12/629,337
CLAIMED SUBJECT MATTER
Claim 1, reproduced below, is illustrative of the claimed subject
matter:
1. An apparatus for providing a pneumatic fluid within a
containment area of a nuclear powerplant, the apparatus
compnsmg:
a pneumatic fluid source including a seal;
a body connected to the pneumatic fluid source so as to
receive the pneumatic fluid from the pneumatic fluid source,
wherein the body includes a discharge port;
an instrument engaged with the body so as to slide along
an axis within the body, wherein the instrument includes an end
configured to remove the seal, and wherein the instrument
includes a core blocked by the body so that the instrument is
slidable a limited distance along the axis toward the seal;
an actuating device configured to drive the instrument the
limited distance toward the seal in a first direction along the axis;
a spring between the body and the core, wherein the spring
is configured to drive the instrument in a second direction
opposite the first direction and away from the seal so as to
maintain the limited distance between the core and the body
when the actuating device is not driving the instrument, and
wherein the spring is configured to permit the core and the body
to come into direct contact that blocks the instrument from
sliding beyond the limited distance; and
an accumulator connected to the discharge port of the
body, wherein the accumulator has a volume into which the
pneumatic fluid is configured to flow, wherein the volume is
configured to reduce the pneumatic fluid to an operating pressure
of a component within the containment area, and wherein the
accumulator includes an outlet configured to connect the
pneumatic fluid at the pressure to the component, wherein the
body and the actuating device are locatable within a containment
area of a nuclear powerplant.
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Appeal2013-002291
Application 12/629,337
REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
N agashima us 4,083,187 Apr. 11, 1978
REJECTIONS 1
I. Claims 1, 3-6, 10, 11, 13-15, and 18-22 stand rejected under
35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement.
II. Claims 1, 3-6, and 10 stand rejected under 35 U.S.C. § 102(b)
as being anticipated by N agashima.
III. Claims 11, 13-15, and 18-22 stand rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Nagashima in view of
Applicant's Admitted Prior Art (hereinafter "AAP A").
DISCUSSION
Rejection I
The Examiner finds that the original disclosure "states that due to the
size and strength of the spring, it maintains the core at a distance from the
1 In the Amendment filed March 27, 2012, Appellants adopted the
Examiner's suggested language in order to overcome the first rejection
based on 35 U.S.C. § 112, second paragraph. In addition, the amendment
clarified that the direct contact of the core and body blocks the instrument,
not the body, from sliding in order to overcome the second rejection based
on 35 U.S.C. § 112, second paragraph. The Examiner entered the
amendment, as evidenced by the Advisory Action mailed April 12, 2012.
Accordingly, we understand the rejections under§ 112, second paragraph, to
be withdrawn and the inclusion of these rejections in the Answer to be in
error.
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Application 12/629,337
seal." Final Act. 3. Based on this finding, the Examiner determines that
independent claims 1 and 11 fail to comply with the written description
requirement because the original disclosure fails to describe a "spring is
configured to drive the instrument in a second direction opposite the first
direction and away from the seal." Id. at 2-3 (emphasis added). The
Examiner further explains that:
Webster's New Basic Dictionary defines the term "drive" as to
push or propel. The term "drive" implies actual movement.
Thus, in order for the spring to drive (push, propel, or move) the
instrument in a direction away from the seal, the force placed on
the instrument by the spring would have to be greater than the
reciprocal force placed on the spring by the instrument.
Ans. 12.
Contending that '"[d]riving' is a fairly 'common, garden variety
word,' Wright, 866 F.2d a[t] 425; indeed, the Examiner points to Webster's
as defining the word to mean 'push' or 'propel,'" Appellants "submit that
the specification explicitly discloses a configuration in which a spring will
actually move the instrument away from the seal, explicitly discusses actual
movement of the instrument by the spring, and implicitly requires that the
spring moves the instrument back to the limited distance." Appeal Br. 11-
12.
In support of these arguments, Appellants direct our attention to
paragraphs 28,2 31, and 33 of the Specification. Id. at 12. The Specification
states:
The spring 245 may serve to position the core 230 away from the
seal 222 during normal operation of the BWR. The spring 245
may also serve to position the core 230 at a distance with
2 Appellants cite paragraph 30; however, the quoted text appears in
paragraph 28.
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Appeal2013-002291
Application 12/629,337
sufficient force that may prevent inadvertent actuation of the
pressure vessel 220 possibly due to vibration or the like.
Spec. iJ 28. The Specification further states, "[t]he position of the core 230
may be determined by the spring 245. The size and strength of the spring
245 generally maintains the core 230 at a distance represented by an 'X'
260" and "[t]he spring 245 may be sized to maintain the core 230 relatively
solid against the cap 250 under reasonable and customary vibration and
shock loading conditions." Spec. iii! 31, 33.
The purpose of the written description requirement in 35 U.S.C.
§ 112, first paragraph, is to "'clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed."' Ariad Pharm.,
Inc. v. Eli Lilly and Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane)
(citing Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1562-63 (Fed. Cir.
1991)). "[T]he test for sufficiency is whether the disclosure of the
application relied upon reasonably conveys to those skilled in the art that the
inventor had possession of the claimed subject matter as of the filing date."
Id. This test "requires an objective inquiry into the four comers of the
specification from the perspective of a person of ordinary skill in the art."
Id.
One skilled in the art considering those portions of the Specification
discussed supra, would understand that in the context of the instant
invention positioning of the core by the spring requires pushing or moving
(i.e., driving) the core at least when the core is subject to vibrations. Thus,
the Specification reasonably conveys possession of the claimed subject
matter.
Accordingly, we do not sustain the Examiner's decision rejecting
claims 1 and 11 as failing to comply with the written description
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Application 12/629,337
requirement. As claims 3-6, 10, 13-15, and 18-22 stand rejected based on
their dependency from either claim 1 or claim 11, we likewise do not sustain
the Examiner's decision rejecting these claims as failing to comply with the
written description requirement.
Rejection II
Appellants argue claims 1, 3-6, and 10 together. See Appeal Br. 18.
We select independent claim 1 as the representative claim, and claims 3-6
and 10 stand or fall with claim 1.
The Examiner finds, inter alia, that Nagashima discloses a spring 39
"configured to drive the instrument in a second direction opposite the first
direction and away from the seal 25 so as to maintain the limited distance
between the core 31/32/34 and the body 17 (right) when the actuating device
30 is not driving the instrument 40." Final Act. 5.
Noting that "Nagashima never says anything about spring 39 biasing
rod 34 and instrument 40 away from a seal or maintain any set distance
between the two," Appellants argue that Nagashima's spring is configured to
act exactly opposite to what is claimed in that it is "expressly purposed for,
driving an instrument only toward a rupture disc in order to intentionally
pierce it." Appeal Br. 18, 17 (emphasis and citation omitted).
Nagashima states:
When the needle 32 moves upward, the ball 36 is released
from its contact against the side surface of the large diameter part
of the needle 32 and thereby enters into the through-hole 35 as
indicated in FIG. 4. Consequently, the locked state between the
ball 36 and the ball retainer 37 is terminated, and the rod 34 and
the cutter 40 immediately undergo an instantaneous descending
movement at a high speed under the expansion force of the coiled
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Appeal2013-002291
Application 12/629,337
spring 39. The rod 34 displaces to the lower limit position where
the lower end thereof abuts against a stop member 42. At this
instant, the cutter 40 pierces and breaks through the rupture disc
25 and thereby unseals or opens the cylinder 21.
Nagashima 4: 12-24. Thus, Appellants are correct that in the embodiment of
Figure 4 ofNagashima, spring 39 biases rod 34 and cutter 43 towards the
rupture disc, not away from the rupture disc.
However, in response to this argument the Examiner further finds that
"Nagashima discloses that when the plunger-solenoid (actuating device) 71
(30) is in the deenergized state (i.e. not driving the plunger-solenoid
(instrument) 72), the plunger-solenoid (instrument) 72 is held displaced
upward by the expansion force of a coiled spring 75 (39)." Ans. 15
(emphasis omitted) (citing Nagashima, 6:43--45). Thus, we understand the
Examiner to separately rely on the embodiment of the actuator shown in
Figure 6 in rejecting claim 1. We note that the embodiment of the actuator
shown in Figure 6 is an alternative to the actuator shown in Figure 4 for use
in the same emergency shut-off valve system. See Nagashima, 2:39--42; id.
at 6:33-37 (describing Figure 6 as depicting a third embodiment and noting
that parts shown in Figure 6 that correspond to parts in Figures 2 through 4
are designated by the same reference numerals).
Regarding the actuator shown in Figure 6, Nagashima states:
In an actuator driving mechanism 70 in FIG. 6, a plunger-
solenoid 71 is accommodated within a casing of pressure-proof
and explosion-proof structure, and a cutter 73 is fixed to the
lower end of a plunger rod 72 of the solenoid 71. When the
plunger-solenoid 71 is in a deenergized state, the plunger rod 72
is held displaced upward by the expansion force of a coiled
spring 7 5 interposed between a spring retainer 7 4 and a
supporting member.
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Application 12/629,337
N agashima, 6: 3 8--4 7 (emphasis added). Thus, in this embodiment
Nagashima describes a spring (75) configured to drive an instrument (72) in
a direction away from the seal.
Responding to the Examiner's finding, Appellants contend "that
spring 7 5 is used in a completely distinct embodiment that cannot be
swapped into the previously-applied embodiments of FIGS. 4 and 5 under
anticipation." Reply Br. 7.
Appellants' argument is not responsive to the rejection as articulated
by the Examiner. The rejection no longer relies on the embodiments shown
in Figures 4 and 5 and does not propose to combine elements from the
embodiments of Figures 4 and 6 to meet the claim. Rather, the rejection
relies solely on the embodiment shown in Figure 6, which is an alternative
embodiment for use with the system shown in Figure 1. Appellants do not
identify what claimed elements are missing in this embodiment of
Nagashima. Thus, Appellants' do not apprise us of error.
We sustain the Examiner's decision rejecting independent claim 1,
and claims 3-6, and 10, which fall therewith.
Rejection III
Appellants do not present separate arguments for the patentability of
claims 11, 13-15, and 18-22. See Appeal Br. 19; Reply Br. 7. Rather
Appellants rely on the same arguments discussed supra. Id.
Accordingly, we sustain the Examiner's decision rejecting claims 11,
13-15, and 18-22 for the reasons discussed supra.
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Application 12/629,337
DECISION
The Examiner's rejection of claims 1, 3-6, 10, 11, 13-15, and 18-22
under 35 U.S.C. § 112, first paragraph, is REVERSED.
The Examiner's rejection of claims 1, 3-6, and 10 under 35 U.S.C.
§ 102(b) is AFFIRMED.
The Examiner's rejection of claims 11, 13-15, and 18-22 under 35
U.S.C. § 103(a) is AFFIRMED.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § l.136(a). See 37 C.F.R.
§ l.136(a)(l )(iv).
AFFIRMED
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