TerraPower, LLCDownload PDFPatent Trials and Appeals BoardNov 1, 20212020005527 (P.T.A.B. Nov. 1, 2021) Copy Citation 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 Appeal 2020-005527 Application 13/794,633 3 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 Appeal 2020-005527 Application 13/794,633 5 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 Appeal 2020-005527 Application 13/794,633 6 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. Appeal 2020-005527 Application 13/794,633 7 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 Appeal 2020-005527 Application 13/794,633 8 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, Appeal 2020-005527 Application 13/794,633 9 862–63 (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.”). Appeal 2020-005527 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 Copy with citationCopy as parenthetical citation