CARNEAL, James P. et al.

Patent Trials and Appeals Board

Mar 30, 2020

14751690 - (D) (P.T.A.B. Mar. 30, 2020)

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.
14/751,690 06/26/2015 James P. CARNEAL 8564-000326-US 9066
33727 7590 03/30/2020
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
WASIL, DANIEL D
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
03/30/2020 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):
dcmailroom@hdp.com
jhill@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES P. CARNEAL, WILLIAM P. DAVIS,
MYLES L. CONNOR, and DAVID W. WEBBER
____________

Appeal 2019-002961
Application 14/751,690
Technology Center 3600
____________

Before ANTON W. FETTING, MICHAEL C. ASTORINO, and
AMEE A. SHAH, Administrative Patent Judges.

ASTORINO, Administrative Patent Judge.

DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), the Appellant1 appeals from the
Examiner’s decision rejecting claims 1, 2, and 4–11. We have jurisdiction
over the appeal under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. The Appellant identifies the real party in interest as GE-
Hitachi Nuclear Energy Americas LLC. Appeal Br. 2.
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STATEMENT OF THE CASE
Claimed Subject Matter
Claim 1, reproduced below, is the sole independent claim on appeal
and illustrative of the claimed subject matter.
1. A nuclear reactor pressure vessel assembly,
comprising:
a reactor housing structure capable of being arranged in a
reactor building; and
a part in the reactor housing structure,
the part including a body and a vibration absorber,
the body including an internal surface,
the internal surface of the body defining at least one cavity
that is not exposed to an environment external to the body, and
the vibration absorber including at least one of,
a harmonic oscillator connected to the internal
surface of the body or an external surface of the body,
a shear multiplier in the at least one cavity,
a hybrid mass-viscoelastic structure in the at least
one cavity and not secured to the internal surface of the body,
and
a distributed damping structure incorporated into
the body.

Rejections
Claims 5 and 9 are rejected under 35 U.S.C. § 112(b) as indefinite.
Claims 1, 2, and 4–11 are rejected under 35 U.S.C. § 112(a) as failing
to comply with the written description requirement.
Claims 1, 2, 4–7, and 9–11 are rejected under 35 U.S.C. § 102(a)(1) as
anticipated by Defilippis (US 2009/0279656 A1, pub. Nov. 12, 2009).

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ANALYSIS
Indefinite
Dependent Claim 5
Claim 5 recites:
5. The nuclear reactor pressure vessel assembly of claim 1,
wherein
the vibration absorber includes the shear multiplier,
the shear multiplier includes a viscoelastic damping
material between two layers, and
at least one end of the shear multiplier is connected to the
inner surface of the body.
Appeal Br., Claims App. (emphasis added).
The Examiner determines that “it is “unclear to the skilled artisan
what constitutes a ‘shear multiplier.’” Ans. 5; see Final Act. 2, 5.
The Appellant argues that the scope of the term “shear multiplier” in
claim 5 would be clear to one having ordinary skill in the art because
Figures 3B and 3E of the written application show the shear multiplier ––
i.e., “a viscoelastic damping material 330 (e.g., a polymer having a
viscoelastic property) between a first layer 325 and second layer 335 that are
a different material than the viscoelastic damping material 330.” Appeal
Br. 9 (citing Spec. ¶ 69). The Appellant’s argument is not persuasive.
At the outset, we note that the Examiner correctly finds that a
definition of the term “shear” or “shear multiplier” is not present in the
Specification. Ans. 5. As for the Examiner’s position that “[t]he plain
meaning of the term ‘shear’ is associated with removing a part of something
by cutting or breaking” (id.), we determine that the Examiner’s asserted
plain meaning is not consistent with use of the phrase “shear multiplier”
when viewed by one of ordinary skill in the art in light of the Specification.
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See, e.g., Spec. ¶ 69. Rather, the term “shear” in “shear multiplier” appears
to relate to the concept that a fluid (e.g., a viscoelastic damping material)
may incur shear stresses across a boundary. See also id. However, this
relationship is vague and does not evoke a clear understanding of the term to
one of ordinary skill in the art.
As for the Appellant’s argument that the scope of the term “shear
multiplier” would be clear to one of ordinary skill in the art because of the
Specification’s disclosure particular to paragraph 69 and Figures 3B and 3E,
we disagree. One of ordinary skill in the art would be able to understand
these disclosures are examples. We fail to understand, and the Appellant
fails to adequately explain, how one of ordinary skill in the art would be able
determine the metes and bounds of the term “shear multiplier” from the
examples.
Therefore, we agree with the Examiner that the meaning of the term
“shear multiplier” is unclear. The term “shear multiplier” appears to
vaguely refer to the concept that a fluid may incur shear stresses across a
boundary, and the Specification lacks guidance to one of ordinary skill in the
art as to the term’s metes and bounds. See In re Packard, 751 F.3d 1307,
1311 (Fed. Cir. 2014) (during prosecution a claim is indefinite when it
contains words or phrases whose meaning is unclear); Ex parte McAward,
2017 WL 3669566, at *5 (PTAB Aug. 25, 2017) (precedential) (explaining
that the USPTO considers a claim indefinite when it “contains words or
phrases whose meaning is unclear”).
Thus, we sustain the Examiner’s rejection of claim 5.

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Dependent Claim 9
Claim 9 recites, “[t]he nuclear reactor pressure vessel assembly of
claim 1, wherein a material of the body includes one of a low alloy steel, a
stainless steel, a nickel-based alloy, and a combination thereof.” Appeal Br.,
Claims App. (emphasis added).
The Examiner determines that the term “low alloy steel” is unclear
because it is a relative term. See Final Act. 2, 5–6. In other words, the
Examiner determines that the metes and bounds of the term “low alloy steel”
would not be understood by one of ordinary skill in the art.
The Appellant argues that one of ordinary skill in the art would
understand that the term “low alloy steel” is a term of art in the nuclear
industry. Appeal Br. 10. The Appellant supports this argument by pointing
out that “the National Institute of Standards and Technology (NIST), in
cooperation with ASTM International, developed standards for low alloy
steel,” which is indicative of the term’s “well-understood meaning.” Id.; see
also id. (citing Spec. ¶ 83 (“low alloy steel (e.g., ASME SA-508)”). The
Appellant’s argument is persuasive.
We agree with the Appellant that one of ordinary skill in the art in the
nuclear industry would understand “low alloy steel” as a term of art. We
note that the Examiner does not address the Appellant’s specific argument
that the term “low alloy steel” is a term of art. Rather, the Examiner
recommits to the determination that “low allow steel” is a relative term. See
Ans. 6. However, as a term of art, one of ordinary skill in the art would
understand its meaning. Also, the Examiner states that the “Appellant [fails
to] provide[] any evidence that one of ordinary skill in the nuclear reactor art
would understand and/or could look up all recognized variations of steel
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which constitute a ‘low alloy steel’.” Id. We are not persuaded by the
Examiner’s rebuttal. Outside of our finding that one of ordinary skill in the
art in the nuclear industry would understand “low alloy steel” as a term of
art, the Examiner’s rebuttal suggests that the rejection is based on
speculation.
Thus, we do not sustain the Examiner’s rejection of claim 9.

Written Description
The Examiner finds that the written description fails to include
critical/essential subject matter to practice the invention. Final Act. 3–4.
The primary reason for the Examiner’s rejection appears to be based on a
now withdrawn rejection under 35 U.S.C. § 112(a) as failing to comply with
the enablement requirement. See id.
The Appellant argues that the present application’s Specification and
the figures adequately show that the inventors had possession of the claimed
invention. Appeal Br. 14 (citing Spec. ¶ 94, Fig. 7). We agree.
Thus, we do not sustain the Examiner’s rejection of claims 1, 2, and
4–11 are rejected under 35 U.S.C. § 112(a) as failing to comply with the
written description requirement.

Anticipation
Independent Claim 1 and Dependent Claims 9–11
The Examiner finds that Defilippis discloses “a reactor housing
structure (e.g., reactor pressure vessel); a body (301) defining a cavity (320);
and a vibration absorber (330) connected (332) to an inner surface of the
body. The part is tubular structure. The nuclear reactor assembly comprises
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a plurality of parts. The body has a unitary structure.” Final Act. 4 (citing
Defilippis Fig. 3).
The Appellant argues that the Examiner fails to clearly explain how
Defilippis’ damping device 300 corresponds to “a part in the reactor housing
structure,” as recited in claim 1. Appeal Br. 17.
In response, the Examiner adds the following explanation:
Defilippis teaches that “FIG. 1 is an illustration of an
example embodiment damping device 100 that may be useable
to damp vibration between two components inside an operating
nuclear reactor” [0023] and “[c]omponent 301 may be any
component found within an operating nuclear reactor needing
damping or movement resistance” [0037]. Defilippis at [0042]-
[0047] explains how a conventional boiling water nuclear
reactor has jet pump assembly (10) in the “reactor vessel”
[0042], and how the damping part (100, 200, 300) can be used
to prevent vibration of the jet pump assembly. Water flows
through the jet pump assembly and “into the reactor core”
[0042]. The skilled artisan knows that the jet pump assembly is
located inside of the reactor pressure vessel, which is also
conventionally referred to as the reactor vessel. This reactor
vessel constitutes the recited “reactor housing structure”.
Clearly Defilippis’ part (100, 200, 300) is in a reactor housing
structure (i.e., the reactor vessel). Thus, Appellant’s argument
that “the damping device 100 is outside of the reactor housing
[structure]” is without merit.
Ans. 8–9.
The Appellant asserts that Defilippis’ Figure 6 shows damping device
100 outside of the reactor housing. Id. The Appellant’s assertion is not
persuasive. First, the assertion does not explain how Figure 6 shows
damping device 100 being outside of the reactor housing. Second, for the
purposes of this appeal only, even if we were to agree with the Appellant
that Figure 6 shows that damping device 100 is outside of the reactor
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housing, the Examiner’s rejection is not limited to dampening device 100 as
shown in Figure 6. Supra.
The Appellant argues that Defilippis fails to disclose “the part
including a body and a vibration absorber . . . the internal surface of the
body defining at least one cavity that is not exposed to an environment
external to the body,” as recited in claim 1. Appeal Br. 17. The Appellant
contends that cavity 320 does not correspond to the internal surface of
component 301 “because component 301 does not completely surround the
cavity 320.” Id.; see Defilippis, Fig. 3. Additionally, the Appellant asserts
that capture 332 “is part of . . . piston 330 (asserted ‘vibration absorber’) and
cannot be used for ‘the body defining at least one cavity’.” Appeal Br. 17.
The Appellant points out that the internal surface of component 301 defines
an opening that is exposed to an outside of component 301, which piston
330 extends through. See id. The Appellant’s argument is not persuasive.
First, the Examiner determines that “claim 1 does not require that the
cavity be completely surrounded.” Ans. 9. We agree. Second, the
Examiner finds that the cavity (i.e., cavity 320) corresponds to the internal
surface of component 301 (i.e., the body). Id. at 10 (annotating and
separating sections of Defilippis’ Figure 6). Third, the Examiner finds that
Defilippis discloses “a sealed (sliding) piston arrangement” and therefore,
“teaches that the cavity is not to be exposed to (but rather sealed from) the
external environment.” Id. at 9. These findings are supported by a
preponderance of the evidence. See id. at 9–11. So, although component
301 has an opening, the opening is sealed and does not expose the cavity to
the environment external to the component 301.
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Thus, we sustain the Examiner’s rejection of independent claim 1 as
anticipated by Defilippis. Each of claims 9–11 depend directly from claim 1
(Appeal Br., Claims App.) and are not separately argued by the Appellant.
Claims 9–11 fall with claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).

Dependent Claim 2
Claim 2 depends from claim 1 and further comprises “at least one of
. . . a tubular structure . . . , wherein the part is one of the at least one of the
tubular structure . . . .” Appeal Br., Claims App.
The Examiner finds that Defilippis’ component 301 is a tubular
structure. Final Act. 4, 7. Additionally, the Examiner finds “Defilippis
teaches that the part ‘may be any component found within an operating
nuclear reactor needing damping or movement resistance’ [0037]” and that
“[t]here are many tubular structure components in an operating nuclear
reactor that need damping.” Id. at 7; see Ans. 12 (citing Defilippis Fig. 3).
The Appellant argues that “Defilippis fails to teach ‘the part is one of
... tubular structure.’ The asserted ‘part’ in Defilippis - the component 301,
piston 330, and cavity 320 - lacks a tubular shape and wouldn’t be
considered a tubular structure.” Appeal Br. 18. The Appellant’s argument is
not persuasive because the Appellant does not offer a basis for the argument
that component 301 lacks a tubular structure or a reason why component 301
–– as a structure that creates cavity 320 that houses piston 330 (Defilippis
Spec. ¶¶ 38–40) –– is not a tubular structure. Additionally, we determine
that the Examiner’s finding is adequately supported.
Thus, we sustain the Examiner’s rejection of dependent claim 2 as
anticipated by Defilippis.
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Dependent Claims 5 and 6
For the rejection of claims 5 and 6, the Examiner finds that Defilippis
discloses a “[v]iscoelastic damping material and hybrid mass-viscoelastic
structure.” Final Act. 4 (citing Defilippis ¶¶ 4, 21).
The Appellant submits that the Examiner’s rejection appears to
improperly construe claims 5 and 6 in the same manner because the
Examiner cites the same paragraphs Defilippis to reject the separate subject
matter in each claim. See Appeal Br. 18. We disagree. The Examiner
merely relied on the same paragraphs as a useful expedient to reject claims 5
and 6 as a group. See Final Act. 4. The Examiner uses a similar approach in
rejecting claims 1, 2, 10, and 11. Id.
The Appellant argues that Defilippis’ disclosure at paragraphs 4 and
21, “appear unrelated to the features in claims 5 [and] 6” and the rejection
“should be reversed.” Appeal Br. 19. The Appellant’s argument is not
persuasive at least because the Appellant does not point to a particular error
in the Examiner’s rejection of claims 5 and 6. Further, we note that the
Examiner explains more details of the rejection of claims 5 and 6 in the
Answer at pages 12–13.
Thus, we sustain the Examiner’s rejection of dependent claims 5 and 6
as anticipated by Defilippis.

Dependent Claim 7
Claim 7 recites “the vibration absorber includes the distributed
damping structure incorporated into the body.” Appeal Br., Claims App.
The Examiner finds Defilippis’ piston 330 corresponds to the claimed
“vibration absorber,” piston 330’s shaft and the spring positioned around
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piston 330’s shaft corresponds to the claimed “distributed damping
structure,” and component 301 corresponds to the claimed “body.” See
Final Act. 4 (citing Defilippis Fig. 3). Accordingly, the Examiner finds that
piston 330’s shaft and the spring positioned around piston 330’s shaft is
incorporated into component 301. The Examiner bases this finding on the
determination that “the term ‘incorporated’ allows for Defilippis’ spring to
be located inside the body without the spring being a physical part of the
body (301).” Ans. 14.
The Appellant argues Defilippis’ spring 361 is not incorporated into
component 301 because “spring 361 is not part of the structure of the
component 301.” Appeal Br. 19. We are persuaded by the Appellant’s
argument.
The relevant issue concerns the broadest reasonable interpretation of
the claimed phrase “incorporated into the body” when viewed consistent
with the Specification, as would be understood by one of ordinary skill in
the art. See In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed.
Cir. 2004) (citations omitted). The broadest reasonable interpretation in
light of the specification of a claim term “is an interpretation that
corresponds with what and how the inventor describes his invention in the
specification, i.e., an interpretation that is ‘consistent with the
specification.”’ In re Smith Int’l, Inc., 871 F.3d 1375, 1382–83 (Fed. Cir.
2017) (citing In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997); In re
Suitco Surface, 603 F.3d 1255, 1259–60 (Fed. Cir. 2010)).
The Specification uses the phrase “incorporated into” on numerous
occasions. Spec. ¶¶ 6, 12, 16, 17, 21, 22, 75, 91, 97, 112, Abstract, Fig. 3D.
Figure 3D is particularly instructive and is reproduced below:
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Figure 3D shows a sectional view of “a distributed damping structure [that]
may be incorporated into the body 350 of the part 300D. A grain
microstructure of the distributed damping structure may include [] first
material M1 dispersed in [] second material M2.”2 Spec. ¶ 75 (emphasis
added). Here, the Specification describes the distributed damping structure
being incorporated into the body, meaning a physical part of the body. Also,
the Specification uses different language to explain a scenario where an
object is inside of the body without being a physical part of the body –– i.e.,
“at least one vibration absorber may be incorporated into a cavity of the part
while the body of the part surrounds the vibration absorber so the vibration
absorber is not exposed to an environment that is external to the part.” Id.
¶ 97 (emphasis added). In view of the foregoing, we cannot reconcile the
Examiner’s construction of the phrase “incorporated into the body” in the
recitation, “the vibration absorber includes the distributed damping structure

2 In Figure 3D, part 300D also includes cavity 320. Spec. ¶ 74.
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incorporated into the body,” with the Specification. Accordingly, we
determine that the Examiner’s construction is inconsistent with the
Specification. Further, we find that the Examiner erred in finding that
Defilippis’ spring, which is positioned around piston 330’s shaft, as shown
in Figure 3, is incorporated into component 301.
Thus, we do not sustain the Examiner’s rejection of dependent claim 7
as anticipated by Defilippis.

CONCLUSION
In summary:
Claims
Rejected
35 U.S.C. § Reference(s)/Basis  Affirmed Reversed
5, 9 112(b) Indefinite 5 9
1, 2, 4–11 112(a) Written Description 1, 2, 4–11
1, 2, 4–7, 9–
11
102(a)(1) Defilippis 1, 2, 4–6,
9–11
7
Overall
Outcome
1, 2, 4–6,
9–11
7, 8

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED IN PART