Ex Parte Trosman et al

Board of Patent Appeals and Interferences

Mar 31, 2008

10748175 (B.P.A.I. Mar. 31, 2008)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte LUKAS TROSMAN, CARY L. KUNZ, RUSSELL E.
STACHOWSKI, RUSSELL M. FAWCETT, SHINGO FUJIMAKI, and
DAISUKE GOTO
____________

Appeal 2007-2607
Application 10/748,175
Technology Center 3600
____________

Decided: March 31, 2008
____________

Before TERRY J. OWENS, JENNIFER D. BAHR, and
DAVID B. WALKER, Administrative Patent Judges.

WALKER, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s
final rejection of claims 21-26 and 28-32. We have jurisdiction under 35
U.S.C. § 6(b) (2002). We affirm.
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Appellants claim an apparatus and method for disposing varying
length fuel rods in a fuel channel assembly (Specification 1:[0002]). Claim
21, reproduced below, is representative of the subject matter on appeal.
21. A fuel bundle for a boiling water reactor,
comprising:
a generally square, hollow tube having four
sides which are configured as sides of the bundle,
a pair of water passages located adjacent to a
longitudinal centerline of the tube so as to extend
centrally through the tube, the pair of water
passages supported by one or more rod supports,
a plurality of fuel rods arranged in a 10 x 10
or 9 x 9 matrix and including full-length rods and
part-length rods, the part-length rods further
comprising:
a first part-length rod group including
two short-length fuel rod subsets in a mirror-
image along the centerline between the two
water passages, each subset further
comprising three short-length fuel rods in a
triangular orientation with one rod of the
subset closer to the longitudinal centerline
between the two water passages than the
other two rods, the one rod in direct adjacent
relation to the other two rods of the subset,
and
a second part-length rod group
including four pairs of intermediate-length
rods, each intermediate-length rod pair
centrally located in the outermost row or
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column of the 10 x 10 or 9 x 9 matrix
adjacent a corresponding one of the four
sides of the tube.

THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Ueda US 5,068,082 Nov. 26, 1991
Johansson US 5,229,068 Jul. 20, 1993
Orii US 6,735,267 B2 May 11, 2004

Claims 21-26 and 28-32 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Orii in view of Ueda and Johansson.

ISSUE
The issue before us is whether Appellants have shown that the
Examiner erred in rejecting claims 21-26 and 28-32 under 35 U.S.C.
§ 103(a) as unpatentable over Orii in view of Ueda and Johansson. The
dispositive issue is whether it would have been obvious to one of skill in the
art to modify the fuel assembly of Orii with the intermediate and short part-
length rods of Ueda as required by the appealed claims in view of the
teachings of Johansson of the advantages of using part-length rods.
Rather than repeat the arguments of Appellants and the Examiner, we
make reference to the Brief and the Answer for their respective details.
Only those arguments actually made by Appellants have been considered in
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this decision. Arguments which Appellants could have made but chose not
to make in the Brief have not been considered and are deemed to be waived.
See 37 C.F.R. § 41.37(c)(1)(vii) (2004).
FINDINGS OF FACT
We find the following enumerated findings to be supported by at least
a preponderance of the evidence. Ethicon, Inc. v. Quigg, 849 F.2d 1422,
1427 (Fed. Cir. 1988) (explaining the general evidentiary standard for
proceedings before the Office).
1. There is no dispute that Orii teaches all of the limitations of claim
21, except for differentiating between short- and intermediate-
length, part-length rods and including two part-length fuel rod
subsets in a mirror-image along the centerline between the two
water passages, each subset further comprising three short-length
fuel rods in a triangular orientation with one rod of the subset
closer to the longitudinal centerline between the two water
passages than the other two rods, the one rod in direct adjacent
relation to the other two rods of the subset (Answer, 3, Br. passim,
Reply Br. passim).
2. Orii shows a reactor core design in Figure 15 with two part-length
fuel rod subsets in a mirror-image along the centerline between the
two water passages, but the subsets each comprise two rather than
the claimed three part-length rods (Orii, Figure 15). Urii also
shows four pairs of part-length rods, each rod pair centrally located
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in the outermost row or column of the 10 x 10 matrix adjacent a
corresponding one of the four sides of the tube, but does not
specify that the rods are of intermediate length (relatively longer
than the part-length rods specified in the two subsets adjacent
to the water passage described above) (Orii, Figure 15, col. 12,
l. 54 – col. 13, l. 39).
3. Ueda teaches sixty –six different embodiments of fuel assemblies
for boiling water nuclear reactors, which include varied
arrangements of part-length fuel rods in 8 x 8, 9 x 9, 10 x 10, and
11 x 11 fuel rod matrices. For example, Ueda shows using three-
rod subgroups adjacent to a water passage (Ueda, Figure 19), and
teaches that using four such subgroups around a water passage
increases the effective multiplication factor at the high temperature
operation period and reduces the effective multiplication factor at
the low temperature operation period to provide a large shutdown
margin (Ueda, col. 12, ll. 53-66).
4. Ueda teaches the use of two types of part-length rods of different
axial length (e.g. short- and intermediate-length rods) and discloses
locating the short-length rods at the inner corner portions of
subbundles near a water channel and the intermediate-length rods
extending outward from a central water channel towards the sides
of the tube. The intermediate-length rods are located further
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outward from center of the rod assembly than the short-length rods
(Ueda, col. 14, l. 41- col. 15, l. 8; Figs. 25A-D).
5. Ueda teaches the use of four single part-length rods, each at the
center of a respective side of a 10 x 10 fuel matrix (Ueda, Fig. 27).
6. Johansson teaches numerous advantages resulting from the part-
length rod construction, including improved cold shut down
margin that enables fuel to be designed with reduced amounts of
burnable absorbers, reduced tendency of the fuel bundle in the
reactor to produce plutonium at the top of the bundle, and reduced
pressure drop in the upper two phase region of the fuel bundle
(Johansson, col. 2, ll. 3-15).

PRINCIPLES OF LAW
“Section 103 forbids issuance of a patent when ‘the differences
between the subject matter sought to be patented and the prior art are such
that the subject matter as a whole would have been obvious at the time the
invention was made to a person having ordinary skill in the art to which said
subject matter pertains.’” KSR Int'l Co. v. Teleflex Inc., 127 S.Ct. 1727,
1734 (2007). The question of obviousness is resolved on the basis of
underlying factual determinations including (1) the scope and content of the
prior art, (2) any differences between the claimed subject matter and the
prior art, (3) the level of ordinary skill in the art, and (4) where in evidence,
so-called secondary considerations. Graham v. John Deere Co., 383 U.S. 1,
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17-18 (1966). See also KSR, 127 S.Ct. at 1734 (“While the sequence of
these questions might be reordered in any particular case, the [Graham]
factors continue to define the inquiry that controls.”)
In rejecting claims under 35 U.S.C. § 103(a), the examiner bears the
initial burden of establishing a prima facie case of obviousness. In re
Oetiker, 977 F.2d 1443, 1445 (Fed. Cir. 1992). See also In re Piasecki, 745
F.2d 1468, 1472 (Fed. Cir. 1984). Only if this initial burden is met does the
burden of coming forward with evidence or argument shift to the appellant.
Id. at 1445. See also Piasecki, 745 F.2d at 1472. Obviousness is then
determined on the basis of the evidence as a whole and the relative
persuasiveness of the arguments. See Oetiker, 977 F.2d at 1445; Piasecki,
745 F.2d at 1472.

ANALYSIS
Appellants argue claims 21, 22, 29, and 31 as a group. We consider
claim 21 above to be representative.
Appellants argue that Orii, singly or in combination with Ueda, does
not teach 1) two short-length fuel rod subsets, each comprising three short-
length rods in a triangular orientation with one rod of the subset closer to the
longitudinal centerline between the two water passages than the other two
rods; 2) a second part-length rod group including four pairs of intermediate-
length rods as required by independent claim 21; and 3) a 10 x 10 fuel–rod
matrix including full-length, intermediate-length, and short-length fuel rods
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as required by claims 21, 29, and 31 (Br. 5-6). The Examiner found that
there is no distinction between Orii and the appealed claims except that Orii
does not distinguish between short- and intermediate-length rods, and the
subsets of rods in a mirror image along the center line are in pairs rather than
the triplets required by the appealed claims (Answer 3). We agree (Findings
of Fact 1 & 2).
The Examiner relied on Ueda for its teaching 1) to provide 3-rod part-
length subsets adjacent to a water passage; and 2) to place relatively shorter
part-length rods closer to the center of the fuel bundle and relatively longer
part-length rods towards the periphery of the fuel bundle (Answer 4 referring
to Ueda, Figures 19 and 25B). The Examiner found that Johansson teaches
that the addition of part-length rods lowers the pressure drop, thereby
improving critical power, and improves shutdown margin (Answer 4, citing
Johansson, col. 2, ll. 3-15).
Appellants further argue that it would not have been obvious and
would not have made sense to combine Ueda’s 8 x 8 matrix of Figure 19 or
9 x 9 matrix of Figure 25 with Orii’s 10 X 10 matrix in Figure 15, because
the references have completely different fuel rod arrangements, water
passage configurations, and Ueda teaches four sets of short-length rods
around each adjacent edge of the water channel. We do not find this
argument persuasive because Ueda teaches sixty-six different embodiments
of fuel assembly with a variety of configurations of part –length rods in 8 x
8, 9 x 9, 10 x 10, and 11 x 11 fuel rod matrices without limiting its teachings
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of the advantages of part-length rods to a particular fuel rod matrix
configuration (Finding of Fact 3). Moreover, the Examiner does not seek to
bodily incorporate the Figure 19 or Figure 25 embodiments of Ueda into
Orii, but rather relies on Ueda only for its teaching 1) to provide 3-rod
subsets adjacent to a water passage; and 2) to place relatively short part-
length rods closer to the center of the fuel bundle and relatively longer part-
length rods towards the periphery of the fuel bundle (Answer 4).
Appellant’s argument appears to attack Orii and Ueda individually, rather
than the combination of Ueda and Johansson with Orii proposed by the
Examiner. Nonobviousness cannot be established by attacking the
references individually when the rejection is predicated upon a combination
of prior art disclosures. See In re Merck & Co. Inc., 800 F.2d 1091, 1097
(Fed. Cir. 1986).
Appellants further argue that there is no teaching, suggestion, or
motivation to combine Orii and Ueda based on the differences between the
specific embodiments cited by the Examiner. The Appellants assert that the
teaching of Johansson that the use of part-length rods lowers pressure drops,
and hence may improve critical power would not provide motivation to
combine because Orii and Ueda already employ part-length rods (Br. 13).
The Examiner found that the proposed modification of Orii is
replacing two full length rods with two part-length rods to convert the two 2-
rod subgroups of Orii to the two 3-rod subgroups as shown in Ueda and as
required by the appealed claims, which the Examiner found to be within the
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purview of the skill artisan and within the teachings of the cited art (Answer
7). The Examiner relied upon Johansson for its teachings of the benefits of
part-length rods, particularly improving critical power. The Examiner also
found the objects of increasing fuel utilization without increasing pressure
loss taught in Orii and maintaining shutdown margin or improving axial
power distribution as taught by Ueda to be closely related to each other and
to optimizing reactor power.
While there must be some articulated reasoning with some rational
underpinning to support the legal conclusion of obviousness, “the analysis
need not seek out precise teachings directed to the specific subject matter of
the challenged claim, for a court can take account of the inferences and
creative steps that a person of ordinary skill in the art would employ.” KSR,
127 S.Ct. at 1741.
When there is a design need or market pressure to
solve a problem and there are a finite number of
identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known
options within his or her technical grasp. If this
leads to the anticipated success, it is likely the
product not of innovation but of ordinary skill and
common sense. In that instance the fact that a
combination was obvious to try might show that it
was obvious under § 103.
Id. at 1742. In this instance, there are a finite number of identified,
predictable possibilities with regard to the arrangement of intermediate- and
short-length rods in a reactor fuel assembly. Ueda shows sixty-six such
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possibilities (Finding of Fact 3), and the Examiner’s proposed combination
is nothing more than another identified, predictable solution, combining the
elements of Orii and Ueda.
In KSR, the Supreme Court emphasized 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.” Id. The Court explained:
When a work is available in one field of endeavor,
design incentives and other market forces can
prompt variations of it, either in the same field or a
different one. If a person of ordinary skill can
implement a predictable variation, §103 likely bars
its patentability. For the same reason, if a
technique has been used to improve one device,
and a person of ordinary skill in the art would
recognize that it would improve similar devices in
the same way, using the technique is obvious
unless its actual application is beyond his or her
skill.
Id. at 1740. The operative question in this “functional approach” is thus
“whether the improvement is more than the predictable use of prior art
elements according to their established functions.” Id.
In this case, replacing two full length rods with two part-length rods to
convert the two 2-rod subgroups of Orii to the two 3-rod subgroups as
shown in Ueda and making the two 3-rod subgroups of relatively shorter
part-length rods that the four pairs of outer part-length rods as suggested by
Ueda is no more than the combination of familiar elements according to
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known methods, which is likely to be obvious where, as here, it does no
more than yield predictable results. KSR, 127 S.Ct. at 1734.
Neither Appellants’ Specification nor Appellants’ arguments present
any evidence that converting the two 2-rod subgroups of Orii to the two 3-
rod subgroups as shown in Ueda and making the two 3-rod subgroups of
relatively shorter part-length rods that the four pairs of outer part-length rods
as suggested by the Examiner would have been uniquely challenging or
difficult for one of ordinary skill in the art. Under those circumstances, the
Examiner did not err in holding that it would have been obvious to one of
ordinary skill in the art at the time the invention was made to combine the
aforementioned teachings in order to provide the benefits that are the
disclosed objects of all of the referenced prior art, particularly an improved
shutdown margin (Answer 5). Because this is a case where the improvement
is no more than the predictable use of prior art elements according to their
established functions, no further analysis was required by the Examiner.
KSR, 127 S.Ct. at 1740.
The Appellants have failed to show error in the Examiner’s rejection
of claim 21. Claims 22, 29, and 31 were not argued separately, and fall with
claim 21. The Appellants make no arguments as to claims 25 and 28.
Claims 25 and 28 therefore fall with claim 21, as they were not argued
separately. See 37 C.F.R. § 41.37(c)(1)(vii). See also In re Young, 927 F.2d
588, 590 (Fed. Cir. 1991).
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The Appellants separately argue the patentability of claims 23, 24, 26,
30, and 32. The Appellants argue that the Examiner has not shown where
the lengths of short- and intermediate-length rods relative to the full–length
rods as required by claims 23, 24, and 26 is taught (Br. 14). The Examiner
found that the number and relative length of part-length rods is a matter of
optimization within prior art conditions or through routine experimentation
(Answer 5). In particular, the Examiner found that the Appellants have not
shown the criticality of the claimed rod length ranges or arrangements, and
indeed there is none, as the claimed rod length ranges and number of partial-
length rods achieve only predictable and expected changes in reactor
performance (Answer 14-15). The Examiner is correct that the Appellants
have provided evidence of neither criticality nor unexpected results. The
Appellants thus have failed to show error in the Examiner’s rejection of
claims 23, 24, and 26.
With respect to claim 30, the Appellants argue that the Examiner has
not shown where the references teach a 10 x 10 fuel-rod matrix with the
claimed arrangement of intermediate length rods. We do not find this
persuasive because Orii teaches the claimed arrangement of four-pairs of
part-length rods (Finding of Fact 1-2), and Ueda teaches the use of
intermediate-length, part-length rods along the sides of a reactor fuel
assembly (Finding of Fact 4). As discussed above, we find the Appellants’
arguments against the combination of Orii and Ueda unpersuasive; the
Appellants have failed to show error in the Examiner’s rejection of claim 30.
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With respect to claim 32, the Appellants argue that the Examiner has
not shown where the references teach a 9 x 9 fuel-rod matrix with six rather
than eight intermediate-length rods in a different arrangement (two pairs and
two unpaired single rods). The cited references do not explicitly teach this
arrangement of intermediate rods, but the Examiner found that the
Appellants have not shown the criticality of particular number of part-length
rods and that the number of partial-length rods achieve only predictable and
expected changes in reactor performance (Answer 14-15). Moreover, Ueda
does teach the placement of a single part-length rod at the center of each of
the sides of a fuel assembly (Finding of Fact 5).
In this case, replacing two intermediate-length rods with two full
length-length rods to convert the two of the pairs of intermediate-length rods
taught by Orii into two unpaired intermediate-length rods as shown in Ueda
is no more than the combination of familiar elements according to known
methods, which is likely to be obvious where, as here, it does no more than
yield predictable results. KSR, 127 S.Ct. at 1734. Neither Appellants’
Specification nor Appellants’ arguments present any evidence that
converting two of the pairs of intermediate-length rods taught by Orii into
two unpaired intermediate-length rods would have been uniquely
challenging or difficult for one of ordinary skill in the art. The Appellants
have failed to show error in the Examiner’s rejection of claim 32.

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CONCLUSIONS
We conclude that Appellants have not shown that the Examiner erred
in rejecting claims 21-26 and 28-32 under 35 U.S.C. § 103(a).

DECISION
The decision of the Examiner to reject claims 21-26 and 28-32 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. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv) (2006).

AFFIRMED

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