Ex Parte Stellwag et al

Patent Trial and Appeal Board

Jun 28, 2013

11904657 (P.T.A.B. Jun. 28, 2013)

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.
11/904,657 09/28/2007 Bernhard Stellwag 693.1007 6026
23280 7590 06/28/2013
Davidson, Davidson & Kappel, LLC
485 7th Avenue
14th Floor
New York, NY 10018
EXAMINER
MCGUE, FRANK J
ART UNIT PAPER NUMBER
3646
MAIL DATE DELIVERY MODE
06/28/2013 PAPER
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.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte BERNHARD STELLWAG and MIHAI G.M. POP
____________________

Appeal 2011-004961
Application 11/904,657
Technology Center 3600
____________________

Before: MICHAEL C. ASTORINO, JOHN W. MORRISON, and
HYUN J. JUNG, Administrative Patent Judges.

JUNG, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Bernhard Stellwag and Mihai G.M. Pop (Appellants) appeal under 35
U.S.C. § 134 from a rejection of claims 1-17 and 26-35. App. Br. 2. Claims
18-25 were canceled. Id. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

CLAIMED SUBJECT MATTER
The claims are related to “nuclear power plants with boiling water
reactors (BWRs)” and “providing an alcohol to a BWR during start-up or
shut-down operation.” Spec., paras. [0001] and [0014]. Claims 1 and 26 are
independent. Claim 1, reproduced below, is illustrative of the claimed
subject matter:
1. A nuclear power plant comprising:
a boiling water reactor;
a reactor cooling system cooling the boiling
water reactor;
an hydrogen water chemistry hydrogen
injection system connected to the reactor cooling
system; and
an alcohol injection system connected to the
reactor cooling system.

Independent claim 26 recites a nuclear power plant and includes the
limitations of claim 1. Claim 26 further recites that “the alcohol injection
system includ[es] an alcohol tank” and “a controller controlling the alcohol
injection system as a function of hydrogen in the reactor cooling system.”
App. Br., Claims App’x.

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REFERENCES
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Nagase
Hettiarachchi
Lewis
Andresen
Ichikawa
US 5,398,269
US 5,600,692
US 5,728,858
US 6,793,883 B2
US 6,940,939 B1
Mar. 14, 1995
Feb. 4, 1997
Mar. 17, 1998
Sep. 21, 2004
Sep. 6, 2005
Ishida
Stellwag
US 2005/0018805 A1
US 2005/0135542 A1
Jan. 27, 2005
Jun. 23, 2005

Electrochemical Potential Measurements of Zircaloy-2, Nuclear
Power Program, Dec. 2003 (hereinafter “EPMZ”).

REJECTIONS
The Appellants seek our review of the:
(1) rejection of claims 1-9, 11, and 26 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa and Ishida;
(2) rejection of claims 10, 32, and 34 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, and Nagase;
(3) rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, and Stellwag;
(4) rejection of claims 14, 15, 16, 27, and 28 under 35 U.S.C. § 103(a)
as unpatentable over Ichikawa, Ishida, and Hettiarachchi;
(5) rejection of claim 17 under 35 U.S.C. § 103(a) as unpatentable
over Ichikawa, Ishida, and EPMZ;
(6) rejection of claim 29 under 35 U.S.C. § 103(a) as unpatentable
over Ichikawa, Ishida, and Lewis;
(7) rejection of claims 30, 31, and 33 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, Lewis, and Andresen; and
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(8) rejection of claim 35 under 35 U.S.C. § 103(a) as unpatentable
over Ichikawa, Ishida, Lewis, Andresen, and Nagase.

ANALYSIS
Rejection (1) - Claims 1-5, 7, and 8
Unpatentable over Ichikawa and Ishida
The Examiner finds that Ichikawa teaches a nuclear power plant that
comprises a hydrogen injection system connected to a reactor cooling
system or an alcohol injection system connected to the reactor cooling
system but “fails to specifically teach both a hydrogen injection system and
an alcohol injection system together.” Ans. 4-5 (citing Ichikawa, col. 13, ll.
20-31, and fig. 19). The Examiner finds that Ishida teaches injecting
hydrogen and alcohol into the reactor cooling system. Ans. 5 (citing Ishida,
para. [0083]). The Examiner concludes that it would have been obvious “to
include an alcohol injection system and a hydrogen injection system in the
nuclear power plant in order to lower the concentrations of oxygen and
hydrogen peroxide in the reactor water.” Id. at 5 (citing Ishida, paras. [0004]
and [0053]).
The Appellants argue that claim 1 “requires two separate systems, a
hydrogen water chemistry hydrogen injection system and an alcohol
injection system” and “Ishida discusses a method of providing both
hydrogen and alcohol injection but fails to teach two separate injection
systems.” App. Br. 7; see also Reply Br. 2.
The Appellants’ arguments are not persuasive. The Examiner finds
that Ichikawa teaches a separate hydrogen injection system and an alcohol
injection system. See Ans. 4. The Appellants’ argument does not address
the Examiner’s finding that Ichikawa, by teaching a hydrogen injection
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system and an alcohol injection system as alternatives, discloses both the
hydrogen injection system and the alcohol injection system.
The Appellants also argue that “Ichikawa actually teaches away from
using both a hydrogen injection system and an alcohol injection system
because Ichikawa states that the ‘same effect’ is provided by the alternative
use of hydrogen injection or alcohol injection.” App. Br. 7; see also Reply
Br. 2.
The Appellants’ argument is not persuasive. The Appellants state that
“Ichikawa is clear in disclosing the alternative use of hydrogen injection or
alcohol injection, not the combined use.” App. Br. 7. Because Ichikawa
does not specifically address the combined use of a hydrogen injection
system and an alcohol injection system, Ichikawa could not criticize,
discredit, or otherwise discourage such combined use. “A reference does not
teach away, however, if it merely expresses a general preference for an
alternative invention but does not ‘criticize, discredit, or otherwise
discourage’ investigation into the invention claimed.” DePuy Spine, Inc. v.
Medtronic Sofamor Danek, Inc., 567 F.3d 1314, 1327 (Fed. Cir. 2009).
The Appellants argue that “as admitted by the U.S.P.T.O. in the
Restriction Requirement dated May 20, 2008, a method for injecting both
alcohol and hydrogen into a BWR . . . is a patentably distinct invention from
the apparatus of the nuclear power plant as recited in claim 1.” App. Br. 8.
The argument is not relevant to the Examiner’s rejection as the Examiner
does not rely on the distinct inventions that gave rise to the Restriction
Requirement.
The Appellants also cite section 2114 of the Manual of Patent
Examining Procedure (MPEP), “which states: ‘A PRIOR ART DEVICE
CAN PERFORM ALL THE FUNCTIONS OF THE APPARATUS CLAIM
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AND STILL NOT ANTICIPATE THE CLAIM.” App. Br. 8. The citation
to the MPEP does not indicate error in the rejection because the Appellants
do not explain how the quoted portion of the MPEP should be applied to the
Examiner’s rejection.
The Appellants further argue that “an Examiner cannot use one
structure to meet separate claim limitations.” App. Br. 8. However, the
argument is not persuasive as the Appellants fail to explain how the
Examiner relies on one structure. The Examiner finds that Ichikawa teaches
the alternatives of a hydrogen injection system 10 and an alcohol injection
system and thus discloses both injection systems. See Ans. 4.
For the reasons supra, we sustain the Examiner’s rejection of claim 1.
The Appellants do not provide separate arguments for claims 2-5, 7, and 8,
which depend from claim 1. App. Br. 8. Accordingly, we sustain the
Examiner’s rejection of claims 1-5, 7, and 8 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa and Ishida.
Rejection (1) – Claim 6
Unpatentable over Ichikawa and Ishida
The Appellants argue claim 6 separately. App. Br. 9. Claim 6
depends from claim 5 which recites that the nuclear power plant of claim 1
further comprises “a reactor water cleanup system connected to the boiling
water reactor.” App. Br., Claims App’x. Claim 6 recites that “the alcohol
injection system has an input at the reactor water cleanup system.” Id.
The Examiner finds that Ichikawa “teaches that other injection
systems (including the noble metal injection system (column 13, lines 59-65)
and semiconductor injection system (column 10, lines 6-12)) can have an
input at the reactor cleanup system rather than the recirculation system
injection line” and concludes that it would have been obvious “to construct
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the alcohol injection system with an input at the reactor cleanup system in
order to provide the alcohol, used to reduce the corrosion potential of
structural members, during the reactor clean-up process.” Ans. 6.
The Appellants contend that “Ichikawa actually teaches away from
the limitation of claim 6” and that “Ichikawa only discloses direct injection
of alcohol at the feedwater or recirculation line.” App. Br. 9 (citing
Ichikawa, col. 13, ll. 20-30). The Appellants also argue that “the Examiner
reads ‘at’ to mean near” and “Ichikawa simply does not have an alcohol
injection system input ‘at’ its purifying system 7.” App. Br. 9.
The Appellants’ arguments are not persuasive. Column 13, lines 27-
30, of Ichikawa states that “the liquid [having alcohol groups] can be
injected into the nuclear reactor through a feedwater system injection line 10
or a recirculation system injection line 9 connected to a recirculation line 8”
(italics added). Ichikawa does not state that liquid having alcohol groups
must be injected through the feedwater system or recirculation system, nor
does Ichikawa exclude injecting through another system. The Examiner
finds that “the pertinent teaching amounts to a preference [and] not a
teaching away from injecting alcohol at the reactor cleanup system,” and we
agree. Ans. 25. The Appellants do not further explain why the portion of
Ichikawa cited by the Appellants criticizes, discredits, discourages, or would
lead in a direction away from connecting an alcohol injection system to a
reactor water cleanup system. See also Ans. 25. Furthermore, the Examiner
concludes that it would have been obvious “to construct the alcohol injection
system with an input at the reactor cleanup system.” Ans. 6 (emphasis
added). The Examiner’s conclusion does not rely on interpreting “at” to
mean “near.” See Ans. 6.
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Thus, we sustain the Examiner’s rejection of claim 6 under 35 U.S.C.
§ 103(a) as unpatentable over Ichikawa and Ishida.
Rejection (1) – Claims 9 and 11
Unpatentable over Ichikawa and Ishida
The Appellants argue claim 9 separately. App. Br. 9. Claim 9 recites
that the nuclear power plant of claim 1 “further compris[es] a controller, the
controller connected to the alcohol injection system and controlling the
alcohol injection system.” App. Br., Claims App’x.
The Examiner finds that “Ichikawa et al. teaches a controller 11.”
Ans. 7. The Appellants argue that the measuring apparatus 11 of Ichikawa is
not a controller. App. Br. 9 and Reply Br. 3. The argument is persuasive as
Ichikawa states that the “corrosion potential measuring apparatus 11
measures corrosion potential in the high-temperature reactor water.”
Ichikawa, col. 13, ll. 38-40. Ichikawa does not support the Examiner’s
finding, and thus, we do not sustain the Examiner’s rejection of claim 9 or
claim 11, which depends from claim 9, under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa and Ishida.
Rejection (1) – Claim 26
Unpatentable over Ichikawa and Ishida
The Appellants argue independent claim 26 separately. App. Br. 10.
The Examiner finds that “Ichikawa et al. teaches . . . a controller 11.” Ans.
8. The Appellants contend that “both Ichikawa and Ishida fail to teach or
show ‘a controller controlling the alcohol injection system as a function of
hydrogen in the reactor cooling system,’ as recited in claim 26.” App. Br.
10. The Appellants’ argument is persuasive because Ichikawa discloses a
“corrosion potential measuring apparatus 11 [that] measures corrosion
potential in the high-temperature reactor water.” Ichikawa, col. 13, ll. 38-40.
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Because Ichikawa does not support the Examiner’s finding, we do not
sustain the Examiner’s rejection of claim 26 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa and Ishida.
Rejection (2) - Claims 10, 32, and 34
Unpatentable over Ichikawa, Ishida, and Nagase
The Appellants argue claims 10, 32, and 34 separately. App. Br. 11-
12. Claims 10 and 32 depend from claim 9, and claim 34 depends from
claim 32. App. Br., Claims App’x.
For claim 10, the Examiner finds that Nagase teaches a controller 19.
Ans. 9 (citing Nagase, col. 8, ll. 13-22, and fig. 1). The Examiner states that
a “motivation for including sensors connected to the controller in the system
is to facilitate detection of hydrogen concentration and passing that
information on to the controller so more hydrogen can be provided to the
coolant when alcohol concentration is below a specified value” and
concludes that it would have been obvious “to include sensors connected to
the controller in the system.” Ans. 10.
The Appellants argue that “the controller in Nagase does not control
any alcohol concentration.” App. Br. 11; see also Reply Br. 4. The
argument is persuasive. Claim 9 recites “a controller, the controller
connected to the alcohol injection system and controlling the alcohol
injection system” and claim 10 recites “sensors sensing a concentration of
alcohol or hydrogen . . . connected to the controller.” App. Br., Claims
App’x. Figure 1 of Nagase shows a controller 19 with inputs from water
quality determining units 16, 17, and 18 and outputs to valves 20 and 23 for
hydrogen and carbon dioxide. See also Nagase, col. 8, ll. 30-33. The
Examiner does not find a controller connected to or controlling an alcohol
injection system and does not provide reasoning for the controller 19 of
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Nagase to be connected to or control an alcohol injection system. Thus,
because the Examiner’s proposed combination of Ichikawa, Ishida, and
Nagase does not render obvious the subject matter of claim 9, we do not
sustain the Examiner’s rejection of claims 10, 32, and 34, which depend
directly or indirectly from claim 9, under 35 U.S.C. § 103(a) as unpatentable
over Ichikawa, Ishida, and Nagase.
Rejection (3) - Claims 12 and 13
Unpatentable over Ichikawa, Ishida, and Stellwag
The Appellants do not provide separate arguments for claims 12 and
13, which depend from claim 1. App. Br. 8. Thus, because the Appellants’
arguments regarding claim 1 are not persuasive, we sustain the Examiner’s
rejection of claims 12 and 13 under 35 U.S.C. § 103(a) as unpatentable over
Ichikawa, Ishida, and Stellwag.
Rejection (4) - Claims 14-16
Unpatentable over Ichikawa, Ishida, and Hettiarachchi
The Appellants argue claims 14-16 separately. App. Br. 12. Claim 14
depends from claim 1 and recites “a reductive nitrogen compound injector
connected to the cooling system.” App. Br., Claims App’x. The Examiner
finds that “Hettiarachchi teaches a reductive nitrogen compound injector
connected to the cooling system” and that “Ishida et al. also teaches []
injecting a reductive nitrogen compound in addition to hydrogen and
alcohol.” Ans. 13 (citing Hettiarachchi, col. 3, ll. 55-59 and Ishida, para.
[0083]).
The Appellants argue that “there is no reason or need for an additional
reductive nitrogen compound injector connected to the asserted combined
cooling system in view of Hettiarachchi,” “[t]here is simply no indication or
teaching to provide two separate injectors,” and “the hydrazine injector in
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the present invention is used to improve the overall oxidation reduction
performance of the additives and not for the reasons set forth in
Hettiarachchi.” App. Br. 12.
The Appellants’ arguments are not persuasive because the Examiner
does not need to find a reason in Hettiarachchi. The Examiner makes
findings and provides reasoning for providing separate injectors. See Ans.
13. Also, the Appellants’ arguments do not address the Examiner’s findings
from Ishida.
The Appellants do not provide separate arguments for claim 15, which
depends from claim 14, or claim 16, which depends from claim 1. App. Br.
8, 12. Thus, because the Appellants’ arguments regarding claims 1 and 14
are not persuasive, we sustain the Examiner’s rejection of claims 14-16
under 35 U.S.C. § 103(a) as unpatentable over Ichikawa, Ishida, and
Hettiarachchi.
Rejection (4) - Claims 27 and 28
Unpatentable over Ichikawa, Ishida, and Hettiarachchi
For claims 27 and 28, which depend from independent claim 26, the
Examiner finds that Ichikawa teaches a controller 11. Because Ichikawa
does not support the Examiner’s finding as discussed supra and the
Examiner does not rely on Hettiarachchi to remedy the deficiency, we do not
sustain the Examiner’s rejection of claims 27 and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Ichikawa, Ishida, and Hettiarachchi.
Rejection (5) – Claim 17 Unpatentable over
Ichikawa, Ishida, and EPMZ
The Appellants argue claim 17 separately. App. Br. 13. Claim 17
depends from claim 1 and recites “wherein a fuel cladding in the boiling
water reactor has an electrochemical potential level of greater than -300
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mV.” App. Br., Claims App’x. The Examiner finds that EPMZ teaches an
electrochemical potential level of -600 to -700 mV (SHE). Ans. 17 (citing,
EPMZ, para. 2, ll. 3-4). The Examiner also states that “the electrochemical
potential level . . . would be greater than -300 mV on the absolute electrode
potential scale.” Id.
The Appellants argue that “EPMZ does not appear to teach the
claimed values as asserted, and the Examiner appears to admit this.” App.
Br. 13. The Appellants further argue that “the Examiner appears to admit
this by relying on routine experimentation” and assert that “why such results
are optimal is based solely on impermissible hindsight.” Reply Br. 5.
The Appellants’ arguments are not persuasive as they do not address
the Examiner’s finding that EPMZ teaches an electrochemical potential level
greater than -300 mV on the absolute electrode potential scale. Accordingly,
we sustain the Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, and EPMZ.
Rejection (6) – Claim 29 Unpatentable over
Ichikawa, Ishida, and Lewis
The Appellants argue claim 29 separately. App. Br. 13. Claim 29
depends from claim 1 and recites “wherein the hydrogen water chemistry
hydrogen injection system is connected to the reactor cooling system at a
first injection point; and the alcohol injection system is connected to the
reactor cooling system at a second injection point different from the first
injection point.” App. Br., Claims App’x.
The Examiner finds that “Lewis teaches a reactor system wherein the
hydrogen injection system is connected to the system at a first injection
point and the alcohol injection system is connected to the system at a second
injection point.” Ans. 19 (citing Lewis, fig. 1). The Examiner states that a
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“motivation for constructing the system such that the hydrogen and alcohol
are injected into the system at different injection points is to facilitate
simultaneous injection of the hydrogen and alcohol if so desired.” Id.
The Appellants note that “the reason for the combination is simply to
facilitate simultaneous injection ‘if so desired’” and argue the “only reason
the Examiner ‘so desires’ such a combination is that the present invention so
desires it” which “is clear hindsight reasoning.” App. Br. 13.
The Appellants’ argument is persuasive. The Examiner makes no
finding for simultaneous injection of hydrogen and alcohol, and the only
suggestion for such simultaneous injection appears to come from the
Appellants. Therefore, we do not sustain the Examiner’s rejection of claim
29 under 35 U.S.C. § 103(a) as unpatentable over Ichikawa, Ishida, and
Lewis.
Rejection (7) – Claims 30, 31, and 33
Unpatentable over Ichikawa, Ishida, Lewis, and Andresen
Claim 30 depends from claim 29, and claim 31 depends from claim
30. App. Br., Claims App’x. The Examiner does not rely on Andresen to
remedy the deficiency in the rejection of claim 29 discussed supra. See Ans.
19-20. Thus, we do not sustain the Examiner’s rejection of claims 30 and 31
under 35 U.S.C. § 103(a) as unpatentable over Ichikawa, Ishida, Lewis, and
Andresen.
Claim 33 depends from claim 9. App. Br., Claims App’x. The
Examiner does not rely on Lewis or Andresen to remedy the deficiency in
the rejection of claim 9 discussed supra. See Ans. 21. Thus, we do not
sustain the Examiner’s rejection of claim 33 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, Lewis, and Andresen.
Rejection (8) – Claim 35
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Unpatentable over Ichikawa, Ishida, Lewis, Andresen, and Nagase
Claim 35 depends from claim 30, which depends from claim 29. App.
Br., Claims App’x. The Examiner does not rely on Andresen or Nagase to
remedy the deficiency in the rejection of claim 29 discussed supra. See Ans.
21. Therefore, we do not sustain the Examiner’s rejection of claim 35 under
35 U.S.C. § 103(a) as unpatentable over Ichikawa, Ishida, Lewis, Andresen,
and Nagase.

DECISION
The Examiner’s rejection of claims 1-8 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa and Ishida is affirmed.
The Examiner’s rejection of claims 9, 11, and 26 under 35 U.S.C. §
103(a) as unpatentable over Ichikawa and Ishida is reversed.
The Examiner’s rejection of claims 10, 32, and 34 under 35 U.S.C.
§ 103(a) as unpatentable over Ichikawa, Ishida, and Nagase is reversed.
The Examiner’s rejection of claims 12 and 13 under 35 U.S.C.
§ 103(a) as unpatentable over Ichikawa, Ishida, and Stellwag is affirmed.
The Examiner’s rejection of claims 14-16 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, and Hettiarachchi is affirmed.
The Examiner’s rejection of claims 27 and 28 under 35 U.S.C.
§ 103(a) as unpatentable over Ichikawa, Ishida, and Hettiarachchi is
reversed.
The Examiner’s rejection of claim 17 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, and EPMZ is affirmed.
The Examiner’s rejection of claim 29 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, and Lewis is reversed.
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The Examiner’s rejection of claims 30, 31, and 33 under 35 U.S.C.
§ 103(a) as unpatentable over Ichikawa, Ishida, Lewis, and Andresen is
reversed.
The Examiner’s rejection of claim 35 under 35 U.S.C. § 103(a) as
unpatentable over Ichikawa, Ishida, Lewis, Andresen, and Nagase is
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)(1)(iv).

AFFIRMED-IN-PART

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