Ex Parte Singh

Patent Trial and Appeal Board

Jan 24, 2017

12769622 (P.T.A.B. Jan. 24, 2017)

United States Patent and Trademark Office
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/769,622 04/28/2010 Krishna P. Singh HOL-011-US 8035
84212 7590 01/26/2017
The Belles Group, P.C.
1608 Walnut Street, Suite 1302
Philadephia, PA 19103
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
01/26/2017 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):
uspto @ thebellesgroup. com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte KRISHNA P. SINGH
Appeal 2015-002144
Application 12/769,622
Technology Center 3600
Before LYNNE H. BROWNE, THOMAS F. SMEGAL, and
JEFFREY A. STEPHENS, Administrative Patent Judges.
STEPHENS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) from the
Examiner’s Final Office Action (“Final Act.”) rejecting claims 1—11, 13, and
21—33, which are all the claims pending in the application. We have
jurisdiction under 35 U.S.C. § 6(b).
We reverse.
1 The real party in interest is identified as Holtec International, Inc. App. Br.
2.
Appeal 2015-002144
Application 12/769,622
Claimed Subject Matter
Claims 1 and 26, reproduced below, illustrate the claimed subject
matter.
1. A thermally conductive cask comprising:
a cylindrical body comprising:
an inner shell forming a cavity for receiving high
level radioactive waste and having a longitudinal axis;
an intermediate shell comprising an inner layer and
an outer layer clad to the inner layer, the inner layer
constructed of a first material having a first thermal
conductivity and the outer layer constructed of a second
material having a second thermal conductivity that is
greater than the first thermal conductivity, the
intermediate shell circumferentially surrounding the inner
shell in a concentric manner so as to form a first annular
gap between the inner layer of the intermediate shell and
the inner shell;
a first set of radial fins located within the first
annular gap and connected to the inner shell and the
intermediate shell;
a gamma shielding material filling the first annular
gap;
an outer shell circumferentially surrounding the
intermediate shell in a concentric manner so as to form a
second annular gap between the outer layer of the
intermediate shell and the outer shell, the outer shell
constructed of the second material;
a second set of radial fins located within the second
annular gap and connected to the outer layer of the
intermediate shell and the outer shell, the second set of
radial fins constructed of the second material; and
a neutron shielding material disposed within the
second annular gap;
a lid connected to a top end of the cylindrical body and
enclosing a top end of the cavity; and
a base connected to a bottom end of the cylindrical body
and enclosing a bottom end of the cavity.
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26. A thermally conductive cask comprising:
a gamma shielding cylindrical body forming a cavity for
receiving high level radioactive waste and having an outer
surface formed of a first material having a first thermal
conductivity;
a neutron shielding cylindrical body surrounding the
gamma shielding cylindrical body, the neutron shielding
cylindrical body comprising:
a first shell forming an inner surface of the neutron
shielding cylindrical body;
a second shell concentrically surrounding the first
shell so that an annular gap exists between the first and
second shells;
a set of connectors disposed within the annular gap
and connected to the first and second shells;
a neutron absorbing material filling the annular gap;
and
wherein the first shell, the second shell, and the connectors
are constructed of a second material having a second thermal
conductivity that is greater than the first thermal conductivity;
and
wherein the first shell is clad to the outer surface of the
gamma shielding cylindrical body.
Rejections2
1. Claims 1, 2, 7—11, 13, 26—29, and 33 stand rejected under 35
U.S.C. § 103(a) as unpatentable over Anderson et al. (US 3,780,306, issued
Dec. 18, 1973). Final Act. 6-12.
2. Claims 3 and 4 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson and Mallory (US 4,806,771, issued Feb. 21,
1989). Final Act. 12-13.
2 In the Answer, the Examiner withdraws the rejection of claim 31 under 35
U.S.C. § 112, second paragraph. Ans. 2.
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Application 12/769,622
3. Claims 5, 6, 14—19, and 21—24 stand rejected under 35 U.S.C.
§ 103(a) as unpatentable over Anderson and Kok et al. (US 4,663,533,
issued May 5, 1987). Final Act. 13—20.
4. Claim 12 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson and Tamaki (US 2005/0224729 Al, published
Oct. 13,2005). Final Act. 20-21.
5. Claims 20 and 25 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson, Kok, and Singh et al. (US 2008/0031396 Al,
published Feb. 7, 2008) (hereinafter, “Singh ’396”). Final Act. 22—23.
6. Claims 30 and 32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson and Knackstedt et al. (US 4,339,411, issued
July 13, 1982). Final Act. 23.
7. Claim 31 stands rejected under 35 U.S.C. § 103(a) as
unpatentable over Anderson, Knackstedt, and Singh (US 2006/0251201 Al,
published Nov. 9, 2006) (hereinafter, “Singh ’201”). Final Act. 24.
ANALYSIS
Claims 1—11, 13, 21—25, 30, 31, and 33
Claim 1 recites “an intermediate shell comprising an inner layer and
an outer layer clad to the inner layer, the inner layer constructed of a first
material having a first thermal conductivity and the outer layer constructed
of a second material having a second thermal conductivity that is greater
than the first thermal conductivity.” The Examiner finds Anderson’s annular
ring 72 is the claimed “intermediate shell” (Final Act. 6 (citing Anderson
Fig. 5)), and that it would have been obvious to make it a bi-metallic layer
(Final Act. 7). In particular, the Examiner finds the use of a bi-metallic layer
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Application 12/769,622
is well known in the art for providing a bridge between dissimilar metals and
that Anderson teaches a bi-metallic substrate, albeit in a different location.
Final Act. 7.
We agree with Appellant’s argument (see App. Br. 15) that the
Examiner has not presented sufficient findings or reasoning as to why one of
ordinary skill in the art would have modified Anderson’s intermediate shell
to be formed of two layers. Appellant points out that Anderson’s annular
ring 72 and conductor bars 70, 74 attached to either side of the ring are all
made of the same material, namely copper. Id. at 16 (citing Anderson col. 4,
11. 25—32). Appellant argues “there is absolutely no need for one of skill in
the art to modify the annular ring 72 to be a bi-metallic layer so as to be ‘a
bridge between dissimilar materials’ because there is no material
dissimilarity between the conductor bars 70, 74.” Id. Because there is no
material dissimilarity, we agree with Appellant that the Examiner’s finding
that a bi-metallic layer is known for providing a bridge between dissimilar
metals does not provide sufficient reason for one of ordinary skill in the art
to make the proposed modification.
The Examiner relies on the rationale expressed in KSR International
Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007), that “[t]he combination of
familiar elements according to known methods is likely to be obvious when
it does no more than yield predictable results.” Final Act. 7; Ans. 24. Here,
however, modifying Anderson’s annular ring 72 to be a bi-metallic layer
does not result in a bi-metallic layer performing the known function of
providing a bridge between dissimilar metals because annular ring 72 is not
connected to dissimilar metals. Thus, additional modifications would be
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necessary, and the Examiner has provided no reason for modifying
Anderson to employ dissimilar metals surrounding annular ring 72.
The Examiner also concludes that the difference between Anderson
and claim 1 is merely the arrangement of parts, and that the motivation to
modify Anderson is the same as the motivation to produce Appellant’s
invention, namely to provide a cask for storing nuclear waste. Ans. 24.
Although shifting the position of a particular element in the prior art may be
an obvious modification, a reason for making the change should be
identified when the change modifies the operation of the device. Cf. In re
Japikse, 181 F.2d 1019, 1023 (CCPA 1950) (finding no error in the
conclusion that “there would be no invention in shifting the starting switch
disclosed by [the prior art] to a different position since the operation of the
device would not thereby be modified”). Each of the layers in Appellant’s
claim 1 and in the Anderson device perform specific functions involving
heat dissipation or radiation shielding. We are persuaded that modifying
Anderson’s annular ring 72 to be bi-metallic like the outer layer would
require more than physically accommodating the layer, and would require a
re-design of how the material would fit into the overall design to conduct
heat or shield radiation. Accordingly, we are not persuaded that the claim
“simply arranges old elements with each performing the same function it had
been known to perform,” KSR 550 U.S. at 417 (internal quotation omitted),
and, on this record, we are not persuaded one of ordinary skill in the art
would have modified Anderson’s annular ring 72 to be comprised of two
layers formed of different materials as recited in claim 1.
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In view of the foregoing, and on the record before us, we do not
sustain the rejection of claim 1 under 35 U.S.C. § 103(a) as unpatentable
over Anderson.
Independent claim 21 similarly recites “an intermediate shell
comprising an inner steel layer and an outer aluminum layer clad to the inner
steel layer.” Independent claim 33 recites a gamma shielding cylindrical
body with “an outer surface formed of a first material having a first thermal
conductivity,” as well as a layer of a neutron shielding cylindrical body
“formed of a second material having a second thermal conductivity . . .
wherein the layer is clad to the outer surface of the gamma shielding
cylindrical body.” Because the rejections of independent claims 21 and 33,
and dependent claims 2—11, 13, 22—25, 30, and 31 all rely on the Examiner’s
rearrangement of the bi-metallic layer taught in Anderson, we also do not
sustain the rejections of claims 2—11, 13, 21—25, 30, 31, and 33.3
Claims 26—29 and 32
Claim 26 recites a gamma shielding cylindrical body with “an outer
surface formed of a first material having a first thermal conductivity,” and
recites that a first shell, second shell, and connectors of a neutron shielding
body “are constructed of a second material having a second thermal
conductivity that is greater than the first thermal conductivity.” Claim 26
further recites that “the first shell is clad to the outer surface of the gamma
shielding cylindrical body.”
3 Because this issue is dispositive as to claims 1—11, 13, 21—25, 30, 31, and
33, we need not reach additional issues raised by Appellant’s arguments as
to these claims.
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Unlike with claim 1, the Examiner’s rejection of claim 26 does not
expressly rely on modifying or rearranging Anderson’s cylindrical layers.
See Final Act. 10—11. Rather, the Examiner appears to find that Anderson’s
intermediate shell 52, shown in Figures 4 and 5,4 is both the claimed “outer
surface” of the gamma shielding body and the “first shell” of the neutron
shielding body, which is formed of a different material. See Final Act. 10.
Absent sufficient findings or reasoning for modifying Anderson’s
intermediate shell 52 to be a bi-metallic layer, we agree with Appellant that
Anderson’s intermediate shell 52 cannot be both the “outer surface” and the
“first shell” recited in claim 26, which are formed of different materials.
App. Br. 18-19.
Appellant does not challenge the Examiner’s finding (Final Act. 11)
that Figure 5 of Anderson shows intermediate shell 52 and gamma radiation
shielding means 56 can be considered a first shell clad to the outer surface of
a gamma shielding cylindrical body, but this finding is inconsistent with the
Examiner’s finding above that Anderson’s intermediate shell 52 is both the
first shell and the outer surface of the gamma shielding body. The
Examiner’s clarification in the Answer that the “Examiner construes the
‘first shell’ of claim 26 to encompass the region external to the gamma
shield, nominally the region between ref. 52 and the unlabeled layer external
to ref. 56” (Ans. 27) is not sufficiently clear to remedy the inconsistency.5
4 As the Examiner points out in the rejection of claim 1, reference numeral
52 in Figure 5 of Anderson “is improperly labeled and should refer to the
layer surrounding ref. 56,” as can be seen in Figure 4. Final Act. 6 (citing
Anderson col. 4,11. 1—4).
5 As shown in Figure 4 of Anderson, reference 52 is external to reference 56,
and it is unclear which “unlabeled layer” the Examiner identifies. If the
Examiner’s reference to the “unlabeled layer external to ref. 56” is meant to
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In view of the foregoing, and on the record before us, we do not
sustain the rejection of claim 26 as obvious over Anderson. For the same
reasons, we do not sustain the rejections of dependent claims 27—29 and 32,
which depend from claim 26.
DECISION
We reverse the Examiner’s decision to reject claims 1—11, 13, and 21—
33.
REVERSED
refer to intermediate shell 52, which is not labeled correctly in Figure 5 of
Anderson, then perhaps the citation of “ref. 52” is meant to refer to inner
shell 50. These findings, however, are not consistent with the Examiner’s
rejection presented in the Final Action and, standing alone, cannot remedy
the deficiencies noted.
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