Ex Parte Stellwag et alDownload PDFPatent Trial and Appeal BoardDec 19, 201613913633 (P.T.A.B. Dec. 19, 2016) Copy Citation 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. 13/913,633 06/10/2013 Bernhard Stellwag 44000693.1004CON2 5008 23280 7590 12/21/2016 Davidson, Davidson & Kappel, LLC 589 8th Avenue 16th Floor New York, NY 10018 EXAMINER MCGUE, FRANK J ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 12/21/2016 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): ddk @ ddkpatent .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte BERNHARD STELLWAG and WILFRIED RUEHLE Appeal 2015-001995 Application 13/913,633 Technology Center 3600 Before LYNNE H. BROWNE, LISA M. GUIJT, and ERIC C. JESCHKE, Administrative Patent Judges. BROWNE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Bernhard Stellwag and Wilfried Ruehle (Appellants) appeal under 35 U.S.C. § 134 from the rejection of claims 1—17. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. Appeal 2015-001995 Application 13/913,633 CLAIMED SUBJECT MATTER Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for protecting components of a primary system of a boiling water reactor having a pressure vessel and a feedwater line opening out into the pressure vessel, the primary system being exposed to a primary coolant, the method comprising: doping surfaces of the components of the reactor with a precious metal; and continuously feeding an alcohol into the primary coolant to establish a desired concentration of the alcohol in the primary coolant, the desired concentration being such that the doping of the component surfaces and the continuously feeding of the alcohol provides corrosion protection potential of values lower than -230 mV for the component surfaces. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Andresen ’709 US 5,135,709 Aug. 4, 1992 Andresen ’330 US 5,768,330 June 16, 1998 Hettiarachchi ’893 US 5,818,893 Oct. 6, 1998 Hettiarachchi ’953 US 2002/0101953 A1 Aug. 1, 2002 Andresen ’686 US 2003/0012686 A1 Jan. 16, 2003 REJECTIONS1 I. Claims 1—17 stand rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement. II. Claims 10-17 stand rejected under 35 U.S.C. § 112, second paragraph, as indefinite. 1 Claims rejected based on the same ground of rejection are grouped together. 2 Appeal 2015-001995 Application 13/913,633 III. Claims 1, 4—7, 9, 10, and 13—16 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Andresen ’330, Hettiarachchi ’953, and Hettiarachchi ’893. IV. Claims 2, 3, 11, and 12 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Andresen ’330, Hettiarachchi2, and Andresen ’686. V. Claims 8 and 17 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Andresen ’330, Hettiarachchi3, and Andresen ’709. DISCUSSION Rejection I The Examiner determines that the step of “continuously feeding an alcohol into the primary coolant” is not enabled by the Specification because “[njowhere is there support in the as-filed specification for the species of continuous feeding of alcohol.” Final Act. 2—3. The Examiner further determines that “the claims are broader than the enabling disclosure because the claims are directed to doping with a generic precious metal and any type of alcohol whereas the disclosure is directed to a specific precious metal, i.e., platinum and a specific type of alcohol, i.e., methanol.” Id. at 3. In support of the latter determination, the Examiner explains that [tjhere [are] a plurality of precious metals, e.g., silver, gold, palladium, zirconium, platinum, etc. Since the claim recites a generic precious metal, any one of the above example metals must be a suitable doping agent. However, the only so-called 2 It is unclear which Hettiarchchi reference is relied upon in this rejection. It appears that the rejection relies upon both references, based on the dependency of the claims addressed by this rejection. 3 See note 1. 3 Appeal 2015-001995 Application 13/913,633 precious metal for doping that appellant provides some limited information is platinum. Id. With respect to the Examiner’s first determination we note that original claim 1 provides support for the species of continuous feeding of the alcohol. See Spec. 8. We further note, that the Examiner fails to set forth any reasoning as to why undue experimentation would be required in order to achieve continuous feeding. Accordingly, the Examiner’s first determination is in error. All questions of enablement are evaluated against the claimed subject matter. As concerns the breadth of a claim relevant to enablement, the only relevant concern should be whether the scope of enablement provided to one skilled in the art by the disclosure is commensurate with the scope of protection sought by the claims. MPEP § 2164.08 (citing AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244 (Fed. Cir. 2003); In re Moore, 439 F.2d 1232, 1236 (CCPA 1971)). See also Plant Genetic Sys., N. V. v. DeKalb Genetics Corp., 315 F.3d 1335, 1339 (Fed. Cir. 2003). Here, the Examiner determines that the scope of protection sought by the claims (i.e., all precious metals) is broader than the scope of enablement provided by the Specification, which is limited to a discussion of platinum. We find the Examiner’s determination to be reasonable because precious metals are not a class of chemical compounds known to behave in a predictable matter. Rather, metals are considered to be “precious” based on their economic value.4 Given their varying chemical properties, one skilled in the art would 4 A precious metal is “[a]ny of several metals, including gold and platinum, that have high economic value.” Thefreedictionary.com, accessed at http://www.thefreedictionary.com/precious+metal (last accessed December 12, 2016). 4 Appeal 2015-001995 Application 13/913,633 not necessary expect silver and gold, for example, to behave in the same manner as platinum. Rather than provide evidence that precious metals other than platinum would act in the manner described, Appellants contend that the Examiner is not accepting the statements set forth in paragraphs 11—14, 21, and 23 as truthful. However, none of these paragraphs describe precious metals other than platinum. Accordingly, we agree with the Examiner that the Specification does not provide enablement commensurate with the scope of protection sought by the claims. For this reason, we sustain the Examiner’s decision rejecting claims 1—17 under 35 U.S.C. § 112, first paragraph. Rejection II The Examiner determines that “the meaning of the claim limitation, ‘the desired concentration being dependent upon the presence of the precious metal doping,’ is vague and indefinite.” Final Act. 4. In support of this determination the Examiner finds that the limitation at issue is subject to multiple interpretations. See id. Appellants argue that the meaning of this claim limitation is clear when the claim is read in light of the Specification, specifically paragraph 21. See Appeal Br. 7. We agree. Paragraph 21 states in relevant part, “[t]he optimum concentration of alcohol is dependent on various factors, such as the component material, the presence of precious metal doping, etc., and is therefore to be determined on a case-by-case basis for each individual reactor.” Spec. 121. The meaning of “dependent on” is further clarified by paragraph 13 of the Specification states “[i]n accordance with a concomitant feature of the invention, the component surfaces are doped with precious metal, for example with Pt, with the result that a lower concentration of 5 Appeal 2015-001995 Application 13/913,633 alcohol is required in the primary coolant.” Id. 113. Thus, one skilled in the art would understand that in the context of the claimed invention “dependent on” means that as more doping occurs, less alcohol is required and vice versa. Accordingly, the meaning of the limitation at issue is clear. For this reason, we do not sustain the Examiner’s decision rejecting claims 10-17 under 35 U.S.C. § 112, second paragraph. Rejection III The Examiner finds that Andresen ’330 discloses all of the limitations of independent claim 1 except for the use of alcohol in the primary coolant. See Final Act. 8. The Examiner further finds that Hettiarachchi ’953 discloses “an alcohol [that] is fed into the primary coolant” {id. (citing Hettiarachchi ’953 | 54)) and that Hettiarachchi ’893 teaches “continuous feeding of same.” Id. at 9 (citing Hettiarachchi ’893 9:55—67). Based on these findings, the Examiner determines that it would have been obvious “to provide a liquid which provides both the noble metal and the alcohol for reducing the corrosion potential protection to a desired level.” Id. at 8. Appellants argue that the conclusory assertion “[i]t would have been obvious to modify Andreson et al. ’330 by using alcohol as taught in the Hettiarachchi et al. references in order to provide a liquid which provides both the noble metal and the alcohol for reducing the corrosion potential protection to a desired level” lacks a rational underpinning. Appeal Br. 10. We agree because the reasoning articulated by the Examiner does not explain why one skilled in the art would modify Andresen ’330’s method to “continuously feed an alcohol into the primary coolant” as required by claim 1. Appeal Br. 16. 6 Appeal 2015-001995 Application 13/913,633 For this reason, we do not sustain the Examiner’s decision rejecting claim 1, and claims 4—7, and 9, which depend therefrom as unpatentable over Andresen ’330 and the Hettiarachchi references. Independent claim 9 also requires “continuously feeding an alcohol into the primary coolant.” Appeal Br. 17. Accordingly, we do not sustain the Examiner’s decision rejecting claim 10, and claims 13—16, which depend therefrom, for the same reason. Rejections IV and V Rejections IV and V rely upon the same incomplete reasoning as Rejection III. Accordingly, we do not sustain these rejections for the same reason we did not sustain Rejection III. DECISION The Examiner’s rejection of claims 1—17 under 35 U.S.C. § 112, first paragraph is AFFIRMED. The Examiner’s rejection of claims 10—17 under 35 U.S.C. § 112, second paragraph is REVERSED. The Examiner’s rejections of claims 1—17 under 35 U.S.C. § 103(a) are REVERSED. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 7 Copy with citationCopy as parenthetical citation