GE-Hitachi Nuclear Energy Americas LLC

Patent Trials and Appeals Board

Apr 15, 2021

2020005900 (P.T.A.B. Apr. 15, 2021)

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.
15/473,903 03/30/2017 Sean T. Mosier 5.0027.1 (24NS313009) 5646
15624 7590 04/15/2021
Ryan Alley IP
(GE Docket)
P.O. Box 87
Alexandria, VA 22313
EXAMINER
COOK, KYLE A
ART UNIT PAPER NUMBER
3726
NOTIFICATION DATE DELIVERY MODE
04/15/2021 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):
office@alleylegal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte SEAN T. MOSIER and BRET E. NELSON

Appeal 2020-005900
Application 15/473,903
Technology Center 3700
Before DANIEL S. SONG, CARL M. DeFRANCO, and
MICHAEL L. WOODS, Administrative Patent Judges.
WOODS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–20. See Appeal Br. 15. We have
jurisdiction under 35 U.S.C. § 6(b).
We REVERSE and enter a NEW GROUND OF REJECTION based
on the authority provided to the Board under 37 C.F.R. § 41.50(b).

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as GE-Hitachi
Nuclear Energy Americas LLC. Appeal Br. 1.
Appeal 2020-005900
Application 15/473,903

2
CLAIMED SUBJECT MATTER
The application is titled “Weld Repair Systems and Methods for Use
in a Nuclear Reactor Jet Pump.” Spec. 1 (emphasis omitted). Claims 1 and
11 are independent. Appeal Br. 17–22 (Claims App.). We reproduce Claim
1, below, with emphasis added to a particular limitation that is central to our
analysis:
1. A system for repairing a jet pump elbow having at
least one of, a first weld connecting the elbow to a first conduit
extending in a first direction from the elbow, and a second weld
connecting the elbow to a second conduit extending in a second
direction from the elbow, the system comprising:
a single-piece base having a first leg shaped to secure in
the first direction around the elbow at the first weld and a second
leg shaped to secure in the second direction around the elbow at
the second weld; and
a drive plate shaped to secure around at least one of the
first conduit at the first weld and the second conduit at the second
weld, wherein the drive plate and the base are configured to bias
against each other so as to compress the at least one of the first
conduit and the second conduit into the elbow.
Id. at 17 (Claims App.) (emphasis added).
REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Deaver US 6,108,391 Aug. 22, 2000
Abura US 8,718,222 B2 May 6, 2014
Koepke US 2008/0107227 A1 May 8, 2008
Smith2 GB 400,079 Oct. 19, 1933

2 The Examiner refers to GB 400,079 as “GB ’079” in the Final Office
Action and “Smith” in the Answer. Compare, e.g., Final Act. 5, with Ans.
15. For consistency in our Decision, we refer to GB 400,079 as “Smith.”
Appeal 2020-005900
Application 15/473,903

3
REJECTIONS
The following rejections are before us on appeal:
(1) Claims 1–10 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Deaver, Abura, Smith, and Koepke. Final
Act. 4.
(2) Claims 11–20 stand rejected under 35 U.S.C. § 103(a) as
unpatentable over Deaver, Smith, and Koepke. Final Act. 10.
OPINION
I. Claims 1–10 as Unpatentable Over Deaver, Abura, Smith, and
Koepke
A. Examiner’s Rejection
In rejecting independent claim 1, the Examiner finds that Deaver
discloses the majority of the claimed limitations, referencing in-part
Deaver’s Figures 1–4. Final Act. 5. We reproduce Deaver’s Figure 4,
below:
Appeal 2020-005900
Application 15/473,903

4

Figure 4 is a “perspective view of a portion of a jet pump assembly and a
clamp assembly.” Deaver, 2:22–24. The Examiner finds that Deaver
teaches a jet pump assembly comprising a “first conduit” (thermal sleeve
36), “elbow” 52, and “second conduit” (riser pipe 38). Final Act. 5 (citing
Deaver, 2:38–47, Figs. 1, 2).
The Examiner acknowledges, however, that Deaver does not teach a
separate drive plate and base “configured to bias against each other so as to
compress the at least one of the first conduit and the second conduit into the
elbow.” See Final Act. 5. To address this shortcoming, the Examiner relies
on Smith and Koepke. Id. at 5–6.
Appeal 2020-005900
Application 15/473,903

5
In relying on Smith, the Examiner finds that Smith teaches flange
members that are clamped together by bolts to relieve stress in a weld.
Seeid. at 6 (citations omitted). We reproduce Smith’s Figure 3, below:

Figure 3 “is a cross-section of a portion of a pipe joint in which the pipes are
upset to provide shoulders for engagement by loose flange members and
increased second of the parent metal adjacent the pipe ends.” Smith, 1:94–
99. Smith discloses that “flange members of which the primary object is to
serve as a safety device in the event of fracture of the weld but they may be
used also to relieve the weld of stresses by increasing the tension on the
bolts in the flanges.” Id. at 1:63–68.
In relying on Koepke, the Examiner cites in relevant part to Koepke’s
Figure 2 (Final Act. 6), an annotated version we reproduce, below:
Appeal 2020-005900
Application 15/473,903

6

Figure 2 is a perspective view of a weld repair device. See Koepke ¶¶ 1, 11.
The Examiner finds that “[t]orqueing the bolts 7 draws the upper and lower
clamp rings 1-4 towards each other and forces grippers 5 radially inward
into pockets 12.” Final Act. 5 (citing Koepke Figs. 2, 5, ¶ 20).
In modifying Deaver based on the teachings of Smith and Koepke, the
Examiner reasons:
[I]t would be obvious to split the members 54, 56, 112 & 114 of
Deaver into two pieces such that each of the pieces is on an
opposite side of the weld, and, a four piece clamp is provided at
each weld interface. For example, while viewing fig. 4 of Deaver,
it would be obvious to split each of members 54 & 56 into two
Appeal 2020-005900
Application 15/473,903

7
portions along a vertical plane passing through the weld interface
between the elbow and thermal sleeve 36 such that one portion
is located on the elbow and the other portion is located on the
thermal sleeve 36, and, to split each of members 112 & 114 along
a horizontal plane passing through the weld interface of elbow
and riser pipe 38 such that one portion is located on the elbow
and the other portion is located on pipe 38. Since Deaver teaches
each of the portions having a ridge 70, 72, 76, 78 that fits into a
respective groove 64A, 64B, 66A, 66B, it would be predictable
that clamping a portion on the elbow to a portion on the thermal
sleeve via bolts will compress the thermal sleeve into the elbow
and relieve stresses on the weld. Furthermore, it would be
predictable to provide a four-piece weld support for a jet pump
in this way as taught by Koepke.
Final Act. 6.3

B. Analysis
The primary issue is whether a skilled artisan would have modified
Deaver’s system by “split[ting]” members 54, 56, 112, and 114 so that each
piece of these members sits on opposite sides of a weld for the purpose of
“reliev[ing] stresses on the weld[s],” as proposed by the Examiner in view of
the teachings of Smith. Final Act. 6.
Appellant argues that the proposed modification of making elements
54, 56, 112, and 114 “multi-piece, with a clamping action between them”
complicates Deaver’s system “for no reason.” Appeal Br. 10. Appellant
explains, “[T]here is no advantage or functionality to dividing solid elements
to allow them to be pushed back into an original position like in Smith or

3 The Examiner also relies on Abura’s teachings and proposes to further
modify Deaver based on these additional teachings. See Final Act. 7. This
portion of the rejection is irrelevant to our analysis, however, and is not
addressed beyond this footnote.
Appeal 2020-005900
Application 15/473,903

8
Koepke, because solid elements already maintain the original position, by
being solid.” Reply Br. 3.
Appellant’s argument is persuasive.
Smith and Deaver do not support the Examiner’s position.
As to Smith, Smith addresses
[S]o-called “seal-weld” joints for steam pipe flanges, the pipes
are held together against an internal pressure by flanges and bolts
and the outer edge of the joints between the two surfaces in
contact is sealed by a run of weld metal, the weld being run while
the flange bolts are pulled up hard and holding the joint surfaces
in close contact.
Smith, 1:13–21; see also id. at Figs. 3–5 (depicting bolts applying a
compressive load at opposite ends of a welded joint and in the axial direction
of the pipe conduits). Smith further describes that the bolts plastically
deform—creep—over time when subject to a tensile load. See id. at 1:26–
34. As a result, the weld “is likely to fracture if the bolts are not tightened
up from time to time so as to relieve the weld of all stress.” Id. at 1:35–40.
In a nutshell, Smith teaches tightening flange bolts over time to compensate
for the creep, or lengthening, of the bolts, so as to maintain the weld as
originally formed. Smith does not teach that applying a compressive load on
a weld itself strengthens the weld, or “relieves” the weld of stress, as the
Examiner finds. See Final Act. 6 (“[Smith] teaches one of ordinary skill in
the art that to reinforce and relieve stresses in the weld of two conduits, two
flange members should be located on opposite sides of the weld and
clamped together such that the flange members compress the conduits
toward each other”); see also id. (“it would be predictable that clamping a
portion on the elbow to a portion on the thermal sleeve via bolts will
compress the thermal sleeve into the elbow and relieve stresses on the
Appeal 2020-005900
Application 15/473,903

9
weld.”). Rather than relieving stresses, we agree with Appellant’s
assessment that “compressing a weld itself could only increase stresses in
the weld.” Reply Br. 2. Indeed, applying a compressive force on the weld
will introduce compressive stresses on that same weld.
Turning to Deaver, Deaver discloses clamps that “maintain[] the
rigidity of the pipe structure.” Deaver, 2:7–8. Deaver accomplishes this
with a clamp apparatus that spans the weld between the elbow and pipe
conduits so as to maintain the welds as originally formed. See, e.g., id. at
Figs. 2–4 (depicting clamping apparatus elements 54, 56, 112, 114 that each
spans the welds between the pipe conduits and elbow). Compared to
Smith’s flange bolts, Deaver’s clamp apparatus is robust, comprising of
solid elements 54, 56, 112, 114 that span the welded joints so as to minimize
any stresses that tend to separate the adjoining conduits and elbow, and
consequently, any stresses on the welds themselves. Smith’s elements, on
the other hand, are held together by bolts that apply a compressive force in
the axial direction of the conduits and elbow. Compare id., with Smith,
Figs. 3–5; see also Appeal Br. 9 (“elements 54 and 56 compress radially and
not axially”).
Because Deaver does not utilize bolts to apply a compressive force in
the axial direction of the pipe conduits, Deaver’s clamping apparatus will
not have bolts that will creep axially. As such, a skilled artisan would not
have modified Deaver based on Smith’s teachings, which suggests re-
torqueing bolts that undergo creep in the axial direction of a pipe conduit.
The Examiner’s proposed modification to divide Deaver’s solid clamping
elements (54, 56, 112, 114) and connect them with a bolt introduces a
problem into the device of Deaver that is absent therefrom by splitting its
Appeal 2020-005900
Application 15/473,903

10
members in accordance with Smith, to solve the problem in the manner
taught by Smith. As such, the rejection is based on impermissible hindsight
to meet the claimed limitations.
For the foregoing reasons, we reverse the rejection of independent
claim 1, and of its dependent claims 2–10—which inherit the same rejection
infirmity—as unpatentable over Deaver, Abura, Smith, and Koepke.

II. Claims 11–20 as Unpatentable Over Deaver, Smith, and Koepke
Claim 11 is similar to claim 1 in that claim 11 recites, “biasing the
first drive plate and the first leg of the base together in the first direction so
as to compress . . . .” Appeal Br. 20 (Claims App.). In addressing this
particular limitation, the Examiner relies on the same flawed analysis
discussed above with respect to claim 1. See Final Act. 10 (“Deaver in view
of [Smith] and Koepke as applied to the rejection of claims 1 and 7 teach
this limitation”).
For the same reasons we do not affirm the rejection of claim 1, we do
not affirm the rejection of claim 11.
Furthermore, claims 12–20 depend from claim 11 and inherit the same
rejection infirmity. See Appeal Br. 20–22; see also Final Act. 11–13. As
such, the Examiner’s rejection of claims 12–20 also fails.
For the foregoing reasons, we reverse the rejection of independent
claim 11, and of its dependent claims 12–20, as unpatentable over Deaver,
Smith, and Koepke.

Appeal 2020-005900
Application 15/473,903

11
III. New Ground of Rejection
A claim is properly rejected as indefinite under 35 U.S.C. § 112,
second paragraph, if, after applying the broadest reasonable interpretation in
light of the specification, the metes and bounds of a claim are not clear
because the claim “contains words or phrases whose meaning is unclear.” In
re Packard, 751 F.3d 1307, 1310, 1322 (Fed. Cir. 2014) (per curiam)
(approving, for pre-issuance claims, the standard from MPEP4
§ 2173.05(e)); see also Ex parte McAward, Appeal 2015-006416, 2017 WL
3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (adopting the approach
for assessing indefiniteness approved by the Federal Circuit in Packard).
Independent claim 1 recites, in relevant part, “a single-piece base
having a first leg.” Appeal Br. 17 (Claims App.) (emphasis added). Claim 7
depends from claim 1 and further recites, “a first clamp wing . . . wherein the
first clamp wing and the base joined form the first leg.” Id. at 19.
Since claim 1 already has a first leg, we do not see how the addition of
a “first clamp wing” can subsequently “form the first leg,” as recited in
dependent claim 7. Because the meaning of “form[ing] the first leg” is
unclear, claim 7 is indefinite under 35 U.S.C. § 112, second paragraph.
Packard, 751 F.3d at 1310, 1322.
Furthermore, claim 8 depends from claim 7 and inherits the same lack
of clarity. See Appeal Br. 20 (Claims App.). For this reason, claim 8 is also
indefinite.

4 The Manual of Patent Examining Procedure (“MPEP”) (9th ed. Rev.
10.2019, rev. June 2020).
Appeal 2020-005900
Application 15/473,903

12
CONCLUSION
We reverse the Examiner’s rejections of claims 1–20 under 35 U.S.C.
§ 103(a).
We enter a new ground of rejection, however, of claims 7 and 8 as
being indefinite under 35 U.S.C. § 112, second paragraph, pursuant to our
authority under 37 C.F.R. § 41.50(b).
DECISION SUMMARY
In summary:
Claim(s)
Rejected
35
U.S.C.
§
Reference(s)/Basis Affirmed Reversed New
Ground
1–10 103 Deaver, Abura,
Smith, Koepke
1–10
11–20 103 Deaver, Smith,
Koepke
11–20
7, 8 112(b) Indefiniteness 7, 8
Overall
Outcome
1–6, 9–20 7, 8

FINALITY OF DECISION
This decision contains a new ground of rejection based on the
authority provided to the Board under 37 C.F.R. § 41.50(b). Section
41.50(b) provides “[a] new ground of rejection pursuant to this paragraph
shall not be considered final for judicial review.” Section 41.50(b) also
provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision, must
exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal as
to the rejected claims:
Appeal 2020-005900
Application 15/473,903

13
(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. The new ground of rejection is
binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the opinion
of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the claims,
appellant may again appeal to the Board pursuant to this subpart.
(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure § 1214.01.

REVERSED; 37 C.F.R. § 41.50(b)