Ex Parte Russell et al

Patent Trial and Appeal Board

Mar 27, 2014

11987159 (P.T.A.B. Mar. 27, 2014)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte WILLIAM EARL RUSSELL II, CHRISTOPHER J. MONETTA,
and DAVID GREY SMITH
____________

Appeal 2011-005154
Application 11/987,159
Technology Center 3600
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner’s
decision rejecting claims 14-23. We have jurisdiction over the appeal under
35 U.S.C. § 6(b).
We REVERSE.
Claimed Subject Matter
Claim 14 is the sole independent claim on appeal, is representative of
the subject matter on appeal, and recites:
14. A fuel rod comprising:
a plurality of fuel rod segments, at least one fuel rod segment
including,
a housing within the fuel rod segment;
a plurality of nuclear fuel elements in the housing; and
at least one internal spacer element, the at least one
internal spacer element being,
axially arranged with the plurality of nuclear fuel
elements in the fuel rod segment,
positioned in the housing adjacent to a position
where a mid-bundle spacer contacts the fuel rod,
having an axial thickness such that none of the
nuclear fuel elements are adjacent to the position where the
mid-bundle spacer contacts the fuel rod, and
having a continuous cross-section of a width equal
to a width of the housing so as to compartmentalize the
housing.

Rejections
The following Examiner’s rejections are before us for review:
I. claims 14-23 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement;
II. claims 14-23 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the enablement requirement;
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III. claims 14-23 under 35 U.S.C. § 112, second paragraph, as
indefinite;
IV. claims 14-21 under 35 U.S.C. § 103(a) as unpatentable over
either one of Fawcett ’613 (JP 2006-162613 A, pub. Jun. 22, 2006) or
Fawcett ’7341 (US 2007/0133734 A1, pub. Jun. 14, 2007) and one of
Nylund (US 6,275,557 B2, iss. Aug. 14, 2001), Lang (US 4,362,691, iss.
Dec. 7, 1982), Kerze (US 3,230,152, iss. Jan. 18, 1966) or Farawila (US
6,298,108 B1, iss. Oct. 2, 2001);
V. claim 22 under 35 U.S.C. § 103(a) as unpatentable over either one
of Fawcett ’613 or Fawcett ’734 and Farawila; and
VI. claim 23 under 35 U.S.C. § 103(a) as unpatentable over either
one of Fawcett ’613 or Fawcett ’734 and Nylund.

OPINION
The interpretation of the term “mid-bundle spacer,” as recited in claim 14
At the outset, we note that the scope of claims in patent applications is
determined by giving claims “their broadest reasonable interpretation
consistent with the specification” and “in light of the specification as it
would be interpreted by one of ordinary skill in the art.” In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Additionally, the

1 The Appellants point out that “JP2006162613 [(Fawcett’613)] claims
priority to US Pat Pub 2007/0133734 [(Fawcett ’734)], and, without an
official English translation from the Examiner, Applicants treat . . . [Fawcett
’613] and . . . [(Fawcett ’734)] as disclosing the same subject matter.” App.
Br. 2 (Footnote 1). We note that the Examiner has not commented on the
Appellants’ footnote. As such, we follow the Appellants’ approach of
treating Fawcett’613 as having the same subject matter as Fawcett’734.
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term “mid-spacer bundle” is not defined explicitly in the Specification. See
Ans. 4.
The Examiner suggests multiple “ordinary” meanings of the word
“mid” in the term “mid-bundle spacer” and of the term “mid-bundle spacer”
that vary in breath. See Ans. 4, 6, 7, and 13. The Appellants assert that:
[a] person skilled in the art, reading the specification and being
familiar with external spacer placement in nuclear fuel
assemblies, would recognize the recited “mid-bundle spacer” as
the spacers from the specification and drawings placed along
the bundle between the top-most and bottom-most bundle
positions.
Reply Br. 5. Put simply, the Appellants interpret the term “mid-bundle
spacer” as “any spacer apart from ends of the bundle.” 2, 3 Reply Br. 6. To
support this interpretation, the Appellants point to the Specification,
including paragraph [0023] and Figure 1. Reply Br. 5-6. In particular, the
Appellants note “[p]aragraph [0023] of the original specification states that
rod assemblies 100 [(Figure 3A),] having segments with internal spacing
elements[,] may substitute for fuel rods 18 and 19 in bundle 10 of [Figure]
1” and Figure 1 “shows spacers 20 at several locations, including an
unlabelled spacer at the midpoint between top and bottom of the bundle 10.”
Id. We agree with the Appellants’ interpretation of the term “mid-bundle
spacer” because it is consistent with the Specification.

2 In other words, the term “mid-bundle spacer” includes “any spacer
positioned in a middle position on the bundle.” App. Br. 17.
3 Despite the Examiner’s multiple proffered definitions of the term “mid-
bundle spacer,” the Examiner explains that broadly interpreted the term
includes “any spacer that is disposed substantially away from the spacers
located at the ends of a fuel bundle.” Ans. 7. Notably, this proffered
interpretation of the term “mid-bundle spacer” is similar to that of the
Appellants.
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Rejection I. The rejection of claims 14-23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement
The Examiner finds that the following recitation of claim 14 fails to
comply with the written description requirement of 35 U.S.C. § 112, first
paragraph:
at least one internal spacer element being . . . positioned in the
housing adjacent to a position where a mid-bundle spacer
contacts the fuel rod, having an axial thickness such that none
of the nuclear fuel elements are adjacent to the position where
the mid-bundle spacer contacts the fuel rod.
App. Br, Clms. App’x. (emphasis added); Ans. 4. Hereinafter, the above-
quoted recitation of claim 14 is referred to as “the positional relationship
between the internal spacer and mid-bundle spacer.” Specifically, the
Examiner finds that the claim term “mid-bundle spacer” is not defined in the
original Specification. See id. The Examiner also finds, perhaps in-part
based on the previous finding, that “[n]o specific placement of the internal
spacer element adjacent to an undefined mid-bundle spacer is disclosed in
the as-filed specification.” See id. In other words, the Examiner finds that
the positional relationship between the claimed internal spacer and mid-
bundle spacer was not disclosed in the original Specification.
The Appellants contend that the term “mid-bundle spacer” is
adequately disclosed in the original written description, which includes the
Specification and the Figures. App. Br. 12-13. The Appellants’ contention
is persuasive. The Appellants correctly assert that the original written
description does not need to use the exact claim language. See App. Br. 12.
Although the term “mid-bundle spacer” has not been explicitly defined in
the original written description, as discussed above, one of ordinary skill in
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the art, upon reading the original written description, would be able to
understand the claim term “mid-bundle spacer” as “any spacer apart from
ends of the bundle.” As such, the original written description reasonably
conveys to skilled artisans that the Appellants possessed the claim term
“mid-bundle spacer” as of the filing date. See Ariad Pharms., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en banc).
As for the Examiner’s finding concerning the positional relationship
between the internal spacer and mid-bundle spacer, the Appellants explain in
the Appeal Brief, at page 8, line 18 through page 12, line 5, how and why
the original written description reasonably conveys to skilled artisans the
Appellants’ possession of the claimed positional relationship between the
internal spacer and mid-bundle spacer as of the filing date. See Ariad. We
agree with the Appellants’ explanation and adopt it as our own.
Additionally, the Examiner’s comments concerning the “mid-bundle
spacer” being essential or critical (Ans. 11-12) do not adequately support the
rejection of claim 14 as failing to comply with the written description
paragraph of 35 U.S.C. § 112, first paragraph because they are not germane
to the Appellants’ possession of the claimed invention at the filing date.
Thus, the Examiner’s rejection of claim 14, and its dependent claims,
as failing to comply with the written description requirement is not
sustained.

Rejection II. The rejection of claims 14-23 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement
At the outset, we note that “[w]hen rejecting a claim under the
enablement requirement of section 112, the PTO bears an initial burden of
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setting forth a reasonable explanation as to why 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) (citing In re
Marzocchi, 439 F.2d 220, 223-24 (CCPA 1971)). The test for compliance
with the enablement requirement is whether the disclosure, as filed, is
sufficiently complete to enable one of ordinary skill in the art to make and
use the claimed invention without undue experimentation. In re Wands, 858
F.2d 731, 737 (Fed. Cir. 1988). The enablement requirement of 35 U.S.C.
§ 112, first paragraph, is separate and distinct from the description
requirement. Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563 (Fed. Cir.
1991); see also Ariad Pharms., Inc. v. Eli Lilly & Co., 598 F.3d 1336, 1345
(Fed. Cir. 2010).
The Examiner determines that “the positional relationship between the
internal spacer and mid-bundle spacer” is not enabled. Ans. 5. The reason
provided by the Examiner for this determination appears to be that the term
“mid-bundle spacer” “is neither mentioned in the as-filed specification nor a
criterion provided as where to exactly locate this so-called mid-bundle
spacer.” Id.; see also Ans. 12-14.
The Appellants contend that the Examiner’s rejection does not explain
“why a person skilled in the art would engage in undue experimentation to
practice claim 14.” App. Br. 15. The Appellants also contend that the lack
of written description “does not necessarily have any bearing on whether
claim 14 is not enabled.” Id. The Appellants’ contentions are persuasive.
Thus, the Examiner’s rejection of claim 14, and its dependent claims,
as failing to comply with the enablement requirement is not sustained.
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Rejection III. The rejection of claims 14-23 under 35 U.S.C. § 112, second
paragraph, as indefinite
The Examiner explains that “the claimed positional relationship
between the internal spacer and mid-bundle spacer” is indefinite. Ans. 5.
The only reason provided by the Examiner for this ground of rejection
appears to be that the location of the “mid-bundle spacer” cannot be
understood. See Ans. 6; see also Ans. 12-14. However, as discussed above,
the term “mid-bundle spacer” is understandable when read in light of the
Specification. See Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d
1565, 1576 (Fed. Cir. 1986). As such, the Appellants’ contention that the
term “mid-spacer bundle” is definite is persuasive. See App. Br. 17-18; see
also Reply Br. 7 and 8.
Thus, the Examiner’s rejection of claim 14, and its dependent claims,
as indefinite is not sustained.

Rejection IV. The rejection of claims 14-21 under 35 U.S.C. § 103(a) as
unpatentable over either one of Fawcett ’613 or Fawcett ’734 and one of
Nylund, Lang, Kerze, or Farawila
The Examiner finds that either one of Fawcett ’613 or Fawcett ’734
discloses the limitations of claim 14, “except for the internal spacer element”
(Ans. 6), which is:
. . . at least one internal spacer element, the at least one internal
spacer element being, [(1)] axially arranged with the plurality of
nuclear fuel elements in the fuel rod segment, [(2)] positioned
in the housing adjacent to a position where a mid-bundle spacer
contacts the fuel rod, [(3)] having an axial thickness such that
none of the nuclear fuel elements are adjacent to the position
where the mid-bundle spacer contacts the fuel rod, and [(4)]
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having a continuous cross-section of a width equal to a width of
the housing so as to compartmentalize the housing.
App. Br., Clms. App’x.
Notably, the Examiner’s rejection of claim 14 is based on either one
of Fawcett ’613 or Fawcett ’734 and one of Nylund, Lang, Kerze, or
Farawila. Ans. 6. In other words, the Examiner’s rejection of claim 14 does
not appear to be based on either one of Fawcett ’613 or Fawcett ’734 and a
combination of teachings from more than one of Nylund, Lang, Kerze, and
Farawila.
The Examiner finds Nylund, Lang, Kerze, and Farawila, hereinafter
“secondary references,” each disclose fuel pellets and an internal spacer.
See Ans. 8. However, the Examiner does not explain how any one of the
secondary references disclose all four limitations of the internal spacer,
required by claim 14, or why any one of them in combination with either
Fawcett ’613 or Fawcett ’734 would have rendered obvious the claimed
subject matter, including all four limitations of the internal spacer. For
example, the Examiner appears to find that Farawila discloses an internal
spacer positioned adjacent to a mid-bundle spacer position, i.e., limitation
two (2). Ans. 14 and 15; see Ans. 8. However, the Examiner does not find
that Farawila discloses the internal spacer having a continuous cross-section,
i.e., limitation four (4). Additionally, since the Examiner appears to find that
only Farawila discloses limitation two (2), the Examiner does not appear to
find that any of Nylund, Lang, and Kerze discloses limitation two (2).
Consequently, the Examiner’s application of Nylund, Lang, and Kerze are
each deficient because each application lacks a finding concerning limitation
two (2). Furthermore, the Examiner does not appear to provide any
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explanation why either one of Fawcett ’613’s or Fawcett ’734’s device
would have been further modified to position an internal spacer adjacent to a
mid-bundle spacer position, i.e., limitation two (2). Therefore, the Examiner
does not provide sufficient evidence to support a prima facie case of
obviousness.
Thus, the Examiner’s rejection of claim 14 under 35 U.S.C. § 103(a)
as unpatentable over either one of Fawcett ’613 or Fawcett ’734 and one of
Nylund, Lang, Kerze, or Farawila are not sustained. Additionally, the
Examiner’s rejections of claims 15-21, which depend directly from claim 14,
do not appear to remedy the deficiencies of the Examiner’s rejections.

Rejection V. The rejection of claim 22 under 35 U.S.C. § 103(a) as
unpatentable over either one of Fawcett ’613 or Fawcett ’734 and Farawila
For the Examiner’s rejection of claim 22, which depends from claim
14, the Examiner further finds that Farwila’s Figure 1 shows a compressed
spring, “S.” Ans. 11. This finding does not remedy the deficiency of the
rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over either
one of Fawcett ’613 or Fawcett ’734 and Farawila. Thus, the Examiner’s
rejection of claim 22 as unpatentable over either one of Fawcett ’613 or
Fawcett ’734 and Farawila is not sustained.

Rejection VI. The rejection of claim 23 under 35 U.S.C. § 103(a) as
unpatentable over either one of Fawcett ’613 or Fawcett ’734 and Nylund
For the Examiner’s rejection of claim 23, which depends from claim
14, the Examiner appears to further find that Nylund’s disclosure at column
3, lines 40+ satisfies the further claim limitation of claim 23, i.e., “wherein
the nuclear fuel elements do not have the same enrichment” (App. Br., Clms.
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App’x.). Ans. 11. This finding does not remedy the deficiency of the
rejection of claim 14 under 35 U.S.C. § 103(a) as unpatentable over either
one of Fawcett ’613 or Fawcett ’734 and Nylund. Thus, the Examiner’s
rejection of claim 23 as unpatentable over either one of Fawcett ’613 or
Fawcett ’734 and Nylund is not sustained.

DECISION
We REVERSE the rejections of claims 14-23.

REVERSED

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