TerraPower, LLC

Patent Trials and Appeals Board

Nov 1, 2021

2020005527 (P.T.A.B. Nov. 1, 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.
13/794,633 03/11/2013 Gary Povirk 1212-032-003-000000 2304
160517 7590 11/01/2021
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
11/01/2021 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):
docketing@fisherbroyles.com
docketing@terrapower.com
jeremy.sanders@fisherbroyles.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 2020-005527
Application 13/794,633
Technology Center 3600
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
BRENT M. DOUGAL, Administrative Patent Judges.
DOUGAL, Administrative Patent Judge.
DECISION ON APPEAL

STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals2 from the
Examiner’s decision to reject claims 1, 5, 7–11, 13, 14, 16, 18, 20–24, 26,
29–31, 33, and 61–65. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.

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
TerraPower, LLC. Appeal Br. 2.
2 The present application was previously addressed by the Board in a
Decision issued on August 30, 2019. See Appeal No. 2018-005021.
Appeal 2020-005527
Application 13/794,633

2
CLAIMED SUBJECT MATTER
The claims are directed to a nuclear fuel assembly. Claims 1 and 16
are independent, and claim 1, reproduced below, is illustrative of the
claimed subject matter (some paragraphing added):
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 adapted at high burn
ups to mitigate interatomic diffusion between the second
material and the cladding.

REJECTIONS
The Examiner relies on the following references to reject the claims:
Name Reference Date
Spalaris US 3,088,893 May 7, 1963
Perkins US 5,247,550 Sept. 21, 1993
Taylor, Jr. US 5,301,218 Apr. 5, 1994
Lee US 2009/0141851 Al June 4, 2009
Walters US 2011/0194666 A1 Aug. 11, 2011

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Application 13/794,633

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The Examiner rejects the claims under pre-AIA 35 U.S.C. as follows:
Claims Rejected 35 U.S.C. § Reference(s)/Basis
1, 5, 7–11, 13,3 14, 16, 18,
20–24, 26, 29–31, 33, 61–65
112 ¶ 2 Indefiniteness
1, 5, 7–11, 13, 14, 16, 18, 20–
24, 26, 29–31, 33, 61–65
112 ¶ 1 Lacking Written
Description Support
1, 5, 7–11, 13, 14, 61, 62 103(a) Obvious over: Taylor, Jr.,
Walters, Perkins, Spalaris
16, 18, 20–22, 26, 30, 31, 33,
63–65
103(a) Obvious over: Taylor, Jr.,
Perkins, Spalaris
23, 24, 29 103(a) Obvious over: Taylor, Jr.,
Perkins, Spalaris, Lee

OPINION
35 U.S.C. § 112
All of the pending claims are rejected as being indefinite (112 ¶ 2) and
as lacking written description support (112 ¶ 1) based on the use of the term
“base material” in independent claims 1 and 16. Final Act. 6. For reference,
the term “base material” is used in claim 1 as follows: a fuel element
comprising a liner having “a first region . . . including a first material, and a
second region . . . including a second material that is a different base
material than the first material.” Appeal Br. 41, Claims App. (emphasis
added).
Indefiniteness
The Examiner determines that the term “base material” is indefinite
because it does not have a clear definition in the art and is not defined by the
Specification. Id. at 6–8. For example, the Examiners finds that “the term
‘base material’ has no single known meaning in the art, and . . . if this term

3 We note that claim 13 currently depends from cancelled claim 2.
Appeal 2020-005527
Application 13/794,633

4
is used in an issued patent, it could be interpreted differently depending on
the agenda and intent of the party interpreting it.” Id. at 7.
Appellant responds with a declaration from Greg Vetterick, who
attests to being “regarded as a subject matter expert and [who] can be
considered ‘a person of ordinary skin in the art’ in the subject matter of the
above referenced patent application.” Declaration of Greg Vetterick 1
(“Vetterick Decl.”). He states that
someone of ordinary skill in the art, when reading the above-
referenced patent application, would readily understand what is
meant by the term “base material” in the context in which it is
used. Specifically, as used in the above-referenced patent
application, a “base material” describes a metal that constitutes
the highest content by percentage in an alloy.
Id.
The Examiner identifies a number of issues with the declaration and
this definition. First, the Examiner determines that “the ordinary skilled
artisan would not assume that the term ‘base material’ necessarily referred to
a metal.” Final Act. 8. Second, the Examiner identifies problem situations
where there is not more of one material than another (e.g., in an alloy). Id.
Third, the Examiner cites definitions of “base material” from the welding
industry and the metal industry to show that there are differing definitions in
different fields relevant to the present invention. Id.
Appellant argues that
the meaning of the term [base material] is clear “in light of the
specification and the prosecution history,” which includes the
Declaration of Greg Vetterick and Appellant’s response filed on
October 9, 2019 in which the Appellant acknowledged that “[a]
‘base material,’ therefore, is the predominant element forming
the material. In other words, a ‘base material’ describes an alloy
that is ‘based’ on a particular element of the periodic table, which
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Application 13/794,633

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indicates that the element upon which the alloy is ‘based’
constitutes the highest content by percentage. For example, a
nickel-based alloy (e.g., an alloy having nickel as its base
material), means that the majority of the alloy is comprised of
nickel. Alloy 625, Alloy 718, and Hastelloy N are examples of
common nickel-based alloys. Similarly, Brass, Bronze, and
OFHC copper are common examples of alloys having copper as
the base material.” (Response to Office Action, filed October 9,
2019).
Appeal Br. 9.
Though Appellant is correct that the meaning of a term, such as “base
material,” is understood “in light of the specification and the prosecution
history,” the above argument does not sufficiently address the Examiner’s
concerns related to indefiniteness.
For example, is not clear why the claim should be limited to a metal
alloy for the base material. Final Act. 8. Appellant cites portions of the
Specification that discuss metals, but the Specification is not limited to
metals. In fact, in the discussion on written description, Appellant notes that
paragraph 42 of the Specification teaches that the first and second materials
in the first and second layers (relevant to determining the materials taught
for the liner) may include “at least one refractory material . . . [which] may
include a refractory metal or alloy.” Appeal Br. 7 (quoting Spec. ¶ 42). Thus,
the Specification indicates that other types of refractory materials, besides
metals, are to be included. Further, we note that paragraphs 34–36 of the
Specification, which discuss the liner and the different materials of the liner,
do not specify any particular material. Then, the next paragraph ([37]) states
that the liner can include a “transition layer 233 [that] may include at least
one of metal, alloy, ceramic, and polymer.” The Specification goes on to list
various characteristics of the liner and the first and second materials, again
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without limitation to any particular material, such as metal alloys, though
some examples of metal are provided. See Spec. ¶¶ 38–44. All of these
teachings of the Specification tend to support a broad reading as to what
materials can make up the liner and therefore the base material.
Thus, based on the claim language and the Specification, we see no
reason why the term “base material” should be limited to being an aspect of
a metal alloy. The Declaration of Greg Vetterick does not require a different
result. The declaration relies on “the context” from “above-referenced patent
application” to inform how a person of skill in the art would understand the
term “base material.” Vetterick Decl. 1. However, the declaration does not
identify what specific “context”4 or paragraphs from the Specification it is
relying on. As noted above, the Specification is not limited to teaching
metals as the exclusive material for the liner.
Thus, even if the declaration were to provide support for how one of
skill in the art would understand the term “base material” in the context of a
metal alloy, neither the Specification, nor the claim, limits the base material
to necessarily involve a metal alloy. Thus, Appellant has not shown that one
of skill in the art would understand the meaning of the term “base material”
as claimed.
Further, Appellant does not address how the declaration, which only
cites to the Specification, overcomes the Examiner’s other findings that
“base material” is indefinite because it is unclear how the base material

4 Appellant also argues about the context in which the term “base material”
is used. Appeal Br. 9. As the term is not used in the Specification, this can
only refer to the claim itself. However, the bounds of “base material” in the
claim itself are not particularly clear as, for example, it is not clear exactly
which other elements the term “base material” limits.
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would be determined when there is not more of one material than another,
and because there are differing definitions in different fields relevant to the
present invention. Final Act. 8.
For all of these reasons, and based on the current record, Appellant
has not shown that the Examiner erred in determining the claims are
indefinite.
Written Description
Concerning written description, the Examiner finds that the
Specification “does not use the term ‘base material,’ or describe what
material is a base material.” Final Act. 6. The Examiner finds that the
Specification describes that layers may include different materials, but is not
more specific than that. Id. (citing Spec. ¶ 34).
As noted previously, Appellant responds with the Vetterick
Declaration. Appeal Br. 6. However, this declaration does not show that the
Specification of the ’633 Application contains written description support
for the term “base material.” In particular, the declaration incorrectly states,
“as used in the above-referenced patent application, a ‘base material’
describes . . . ,” when the term is not used in the Specification. Vetterick
Decl. 1. Appellant similarly states that the Specification discusses
“references to a ‘base material’” in the context of written description
support, without identifying any portion of the Specification that uses the
term “base material.” Appeal Br. 8. A review of the record in this case yields
no instance of the term “base material” being used in the Specification-as-
filed.
At the same time, written description support does not require that the
term at issue be used in the Specification. Thus, we consider whether
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Appellant’s other arguments are sufficient to show written description
support. We determine that they are not.
Appellant argues that the Specification includes certain “examples of
diffusion and mixing of materials to form alloys.” Id. at 7 (citing Spec.
¶¶ 38, 42). As noted above, we determine that “base material” is not limited
being an aspect of a metal alloy. Thus, even if this disclosure were to
provide sufficient support for embodiments involving metal alloys, it is
insufficient to provide support for the full scope of the claims. A “sufficient
description of a genus . . . requires the disclosure of either a representative
number of species falling within the scope of the genus or structural features
common to the members of the genus so that one of skill in the art can
‘visualize or recognize’ the members of the genus.” Ariad Pharms., Inc. v.
Eli Lilly & Co., 598 F.3d 1336, 1350 (Fed. Cir. 2010) (en banc). This is
required in order to determine “whether the disclosure of the application
relied upon reasonably conveys to those skilled in the art that the inventor
had possession of the claimed subject matter as of the filing date. Id. at
1351.
For all of these reasons, and based on the current record, Appellant
has not shown that the Examiner erred in finding the claims lack written
description support.

35 U.S.C. § 103
As discussed supra, the language of claims 1 and 16 have been found
to be indefinite. As the scope of the claims cannot be determined, it would
be imprudent to “speculat[e] as to [the] meaning of the terms employed and
assum[e] as to the scope of such claims.” See In re Steele, 305 F.2d 859,
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Application 13/794,633

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862–63 (CCPA 1962) (holding that the examiner and the board erred in
relying on what at best were speculative assumptions as to the meaning of
the claims and basing a rejection under 35 U.S.C. § 103 thereon).
Accordingly, we cannot sustain any of the Examiner’s rejections of the
claims under 35 U.S.C. § 103(a) because to do so would require speculation
as to the scope of the claims.

Objections
The drawings are objected to for not depicting a feature of claim 1
separate from that discussed above. Final Act. 5; see also Appeal Br. 5–6.
We do not address the merits of the objection because the Examiner’s
objection is a petitionable matter–not an appealable matter. 37 C.F.R.
§§ 1.113(a), 1.181; see also MPEP § 2163.06 (II) and MPEP § 706.01
(“[T]he Board will not hear or decide issues pertaining to objections and
formal matters which are not properly before the Board.”).

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Application 13/794,633

10
DECISION SUMMARY
In summary:
Claims
Rejected
35
U.S.C. §
Reference(s)/
Basis
Affirmed Reversed
1, 5, 7–11, 13,
14, 16, 18, 20–
24, 26, 29–31,
33, 61–65
112 Indefiniteness 1, 5, 7–11, 13,
14, 16, 18, 20–
24, 26, 29–31,
33, 61–65

1, 5, 7–11, 13,
14, 16, 18, 20–
24, 26, 29–31,
33, 61–65
112 Written
Description
Support
1, 5, 7–11, 13,
14, 16, 18, 20–
24, 26, 29–31,
33, 61–65

1, 5, 7–11, 13,
14, 61, 62
103(a) Taylor, Jr.,
Walters,
Perkins,
Spalaris
1, 5, 7–11,
13, 14, 61,
62
16, 18, 20–22,
26, 30, 31, 33,
63–65
103(a) Taylor, Jr.,
Perkins,
Spalaris
16, 18, 20–
22, 26, 30,
31, 33, 63–
65
23, 24, 29 103(a) Taylor, Jr.,
Perkins,
Spalaris, Lee
23, 24, 29
Overall
Outcome
1, 5, 7–11, 13,
14, 16, 18, 20–
24, 26, 29–31,
33, 61–65

TIME PERIOD FOR RESPONSE
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).
AFFIRMED