Gary Povirk et al.

Patent Trials and Appeals Board

Aug 30, 2019

13794633 - (D) (P.T.A.B. Aug. 30, 2019)

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.
13/794,633 03/11/2013 Gary Povirk 1212-032-003-000000 2304
160517 7590 08/30/2019
FisherBroyles LLC - TerraPower, LLC
Joan Schmeichel, IP Operations Manager
15800 Northup Way
Bellevue, WA 98008
EXAMINER
GARNER, LILY CRABTREE
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/30/2019 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):
docketing@fisherbroyles.com
jeremy.sanders@fisherbroyles.com
jschmeichel@terrapower.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte GARY POVIRK, JAMES M. VOLLMER,
RYAN N. LATTA, GRANT HELMREICH, and PHILIP SCHLOSS
____________________

Appeal 2018-005021
Application 13/794,633
Technology Center 3600
____________________

Before FREDERICK C. LANEY, PAUL J. KORNICZKY, and
BRENT M. DOUGAL, Administrative Patent Judges.

KORNICZKY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2018-005021
Application 13/794,633

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STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision, as set forth in the Final Office Action dated August 11,
2017 (“Final Act.”), rejecting claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26,
29–31, 33, and 61–65.2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and ENTER NEW GROUNDS OF REJECTION.

THE CLAIMED SUBJECT MATTER
The claims are directed to a nuclear fuel element. Claims 1 and 16 are
the independent claims on appeal. Claim 1, reproduced below with disputed
limitations italicized for emphasis, is illustrative of the claimed subject
matter:
1. A nuclear fuel assembly including a plurality of fuel
elements, wherein each fuel element comprises:
a liner disposed exterior to an annular nuclear fuel, the
annular nuclear fuel comprising Uranium metal; and
a cladding layer disposed exterior to the liner;
wherein the liner includes a first region disposed adjacent
the annular nuclear fuel and including a first material, and a
second region disposed adjacent the cladding layer and including
a second material that is a different base material than the first
material, wherein the first material is adapted at high burn ups to
mitigate interatomic diffusion between the first material and the
annular nuclear fuel, the first material and the second material
are mechanically bonded around a perimeter interface and
adapted at high burn ups to mitigate interatomic diffusion
between the first and second material, and the second material is

1 TerraPower, LLC (“Appellant”) is the applicant pursuant to 37 C.F.R.
§ 1.46, and is identified as the real party in interest. Appeal Brief, dated
February 14, 2018 (“Appeal Br.”), at 2.
2 Claims 2–4, 6, 12, 15, 17, 19, 25, 27, 28, 32, and 34–60 are cancelled.
Appeal Br. 37–41 (Claims App.).
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adapted at high burn ups to mitigate interatomic diffusion
between the second material and the cladding.

REFERENCES
In rejecting the claims on appeal, the Examiner relied upon the
following prior art:
Spalaris
Perkins
Taylor
US 3,088,893
US 5,247,550
US 5,301,218
May 7, 1963
Sept. 21, 1993
Apr. 5, 1994
Lee
Walters
US 2009/0141851 A1
US 2011/0194666 A1
June 4, 2009
Aug. 11, 2011

REJECTIONS
The Examiner made the following rejections:
1. Claims 1, 5, 7–11, 13, 14, 61, and 62 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Taylor, Walters, Perkins, and
Spalaris.3
2. Claims 16, 18, 20–22, 26, 30, 31, 33, and 63–65 stand rejected
under 35 U.S.C. § 103(a) as being unpatentable over Taylor, Perkins, and
Spalaris.
3. Claims 23, 24, and 29 stand rejected under 35 U.S.C. § 103(a) as
being unpatentable over Taylor, Perkins, Spalaris, and Lee.
Appellant seeks our review of these rejections.

3 Claim 10 is not listed in the Examiner’s summary statement of the
rejection (see Final Act. 4–5), but is addressed in the substantive discussion
of the rejection (see id. at 10, ¶ 30). Appellant addresses the rejection of
claim 10. Appeal Br. 5. We treat the absence of claim 10 from the summary
statement as a typographical error.
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DISCUSSION
New Grounds of Rejection
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection for claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31,
33 and 61–65.
Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65 are
rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the
written description requirement. Independent claims 1 and 16 contain
references to a “base material” of certain regions or layers in the liner which
is not described in the Specification in such a way to reasonably convey to
one skilled in the art that the inventor(s) had possession of the claimed
invention. Paragraph 34 of the Specification, for example, states that “at
least some of the layers [of the liner] may include the same material while
some include different materials.” The Specification, however, does not use
the term “base material,” or describe what material is a base material.
Thus, based on the current record, we conclude that independent
claims 1 and 16 fail to comply with the written description requirement of 35
U.S.C. § 112, first paragraph. Claims 5, 7–11, 13, 14, 18, 20–24, 26, 29–31,
33 and 61–65 depend from these independent claims and, likewise, fail to
comply with the written description requirement.
Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65
also are rejected under 35 U.S.C. § 112, second paragraph, as being
indefinite for failing to particularly point out and distinctly claim the subject
matter which the inventor or a joint inventor regards as the invention. The
references to a “base material” of a region or layer of a liner as recited in
claims 1 and 16 are unclear. The Specification does not use or define the
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term “base material,” nor is there evidence of what one of skill in the art
would understand “base material” to mean.
Neither the Specification nor Appellant define the term “base
material” or the boundaries of whether the base materials are the same or
different. The Specification does not disclose any objective boundaries,
such as the proportion/composition of the common metal, for determining
whether alloys forming the recited layer or region have “different” base
materials. “Claim language employing terms of degree has long been found
definite where it provided enough certainty to one of skill in the art when
read in the context of the invention.” Interval Licensing, 766 F.3d at 1370
(citations omitted). However, “[t]he claims, when read in light of the
specification and the prosecution history, must provide objective boundaries
for those of skill in the art.” Id. at 1371 (citing Nautilus, Inc. v. Biosig
Instruments, Inc., 134 S. Ct. 2120, 2130 & n.8 (2014) (additional citation
omitted)); see Enzo Biochem Inc. v. Applera Corp., 599 F.3d 1325, 1332
(Fed. Cir. 2010) (When a “word of degree” is used, a patent must provide a
“standard for measuring that degree.”).
Here, we conclude that independent claims 1 and 16 fail to comply
with 35 U.S.C. § 112, second paragraph, by failing to particularly point out
and distinctly claim the subject matter which the inventor or joint inventor
regards as the invention. Claims 5, 7–11, 13, 14, 18, 20–24, 26, 29–31, 33
and 61–65 depend from these independent claims and, likewise, are
indefinite.

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REJECTIONS 1–3
Having determined that claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26,
29–31, 33 and 61–65 are indefinite based on the “different base material”
limitation at issue in the prior art rejections (App. Br. passim), we cannot
sustain the rejections 1–3 of these claims under 35 U.S.C. § 103(a) because
to do so would require speculative assumptions as to the meaning and scope
of the claims. See In re Steele, 305 F.2d 859, 862–63 (CCPA 1962) (holding
that the Board erred in affirming a rejection of indefinite claims under 35
U.S.C. § 103(a)). We emphasize that our reversal of the rejections is
because the claims are indefinite; hence, a decision has not been made based
on the merits of the prior art rejections of claims 1, 5, 7–11, 13, 14, 16, 18,
20–24, 26, 29–31, 33 and 61–65.

DECISION
The Examiner’s rejections of claims 1, 5, 7–11, 13, 14, 16, 18, 20–24,
26, 29–31, 33 and 61–65 are pro forma REVERSED.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection as follows:
1. Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65
are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with
the written description requirement.
2. Claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26, 29–31, 33 and 61–65
are rejected under 35 U.S.C. § 112, second paragraph, as being indefinite.
37 C.F.R. § 41.50(b) provides that “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
37 C.F.R. § 41.50(b) also provides that Appellants, WITHIN TWO
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MONTHS FROM THE DATE OF THE DECISION, must exercise one of
the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the prosecution will be remanded to the
examiner. . . .
(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .
Further guidance on responding to a new ground of rejection can be found in
the Manual of Patent Examining Procedure § 1214.01.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). 37 C.F.R.
§ 1.136(a)(1)(iv).

REVERSED; 37 C.F.R. § 41.50(b)