Ex Parte Davis et al

Patent Trial and Appeal Board

Oct 15, 2013

11159924 (P.T.A.B. Oct. 15, 2013)

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.
11/159,924 06/22/2005 Michael D. Davis 12093/100231 4161
26646 7590 10/15/2013
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
MONDT, JOHANNES P
ART UNIT PAPER NUMBER
2894
MAIL DATE DELIVERY MODE
10/15/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL D. DAVIS, DAREL R. CLARK,
JOHN W. VAN BERGEN, and ANTHONY PUGH
____________

Appeal 2011-011549
Application 11/159,924
Technology Center 3600
____________

Before PHILLIP J. KAUFFMAN, BARRY L. GROSSMAN, and
BART A. GERSTENBLITH, Administrative Patent Judges.

GERSTENBLITH, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF THE CASE
Michael D. Davis et al. (“Appellants”) appeal under 35 U.S.C. § 134
from the Examiner’s decision rejecting claims 4, 5, and 7-26.1 We have
jurisdiction under 35 U.S.C. § 6(b).
Claimed Subject Matter
Claims 4, 10, and 13 are the independent claims on appeal. Claim 4 is
illustrative of the claimed subject matter and is reproduced below.
4. A method to calculate shape deviations of a fuel
channel of a boiling water reactor with a device that has a
structure for supporting a fuel channel and imparting acoustic
energy from an array of transducers supported by the structure,
the device further having a pulse generator to send a pulse to
the transducers and a computer to calculate a total time of flight
of acoustic energy and distances of the pulses, the channel
surrounded by a fluid with a temperature and a salinity, the
method comprising:
providing the structure for supporting the fuel channel,
the structure disposed around all sides of the fuel channel and
extending the length of the channel, the array of transducers
positioned along the length of the structure at a plurality of
elevations, transducers at each elevation positioned on each side
of the structure;
stabilizing the fuel channel at a plurality of positions
along the length of the structure, thereby maintaining the fuel
channel in a constant position in the structure;
generating a pulse with the pulse generator and
simultaneously sending the pulse to the array of transducers,
each transducer:
converting the pulse to acoustic energy,
imparting acoustic energy onto the fuel channel,
receiving acoustic energy echoing from the fuel channel,
converting the echoing acoustic energy into an electrical
signal, and sending the electrical signal to the computer;

1 Claims 1-3 and 6 were cancelled. App. Br. 2.
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calculating the total time of flight of the acoustic energy
with the computer;
calculating a total distance between each transducer and
the fuel channel based on the calculated total time of flight of
the acoustic energy with the computer; and
comparing the calculated total distance for each
transducer to a standard fuel channel, wherein the shape
deviations over the length of the channel are determined.
App. Br., Claims App’x 1.
References
The Examiner relies upon the following prior art references:
Scharpenberg US 4,847,037 Jul. 11, 1989
McClelland US 5,661,766 Aug. 26, 1997
Beier US 6,549,600 B1 Apr. 15, 2003
Nakayasu2 Doc. No. S60-195412 Oct. 3, 1985

Rejection
Appellants seek review of the following rejection:
I. Claims 4, 5, and 7-26 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Beier, McClelland, Nakayasu, and
Scharpenberg.

SUMMARY OF DECISION
We AFFIRM.

2 Nakayasu refers to the English translation, PTO 06-3834, of Japanese
Patent Document, Document Number S60-195412, titled “Contour
Dimension Measurement Method for a Vacillating Channel Box” translated
by Schreiber Translations, Inc. (dated Apr. 2006). See Ans. 3.
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OPINION
The Examiner concluded that the combination of Beier, McClelland,
Nakayasu, and Scharpenberg would have rendered the subject matter of
claims 4, 5, and 7-26 obvious to one of ordinary skill in the art at the time of
invention. Ans. 3-22. The entirety of the Examiner’s findings are not
repeated here, but with respect to Appellants’ main contentions, the
Examiner found that Beier substantially discloses the claimed invention, but
does not disclose transducers located on each side of the structure supporting
the fuel channel. Id. at 5. The Examiner found that McClelland discloses a
method and device for ultrasonic inspecting of a fuel element in a nuclear
reactor, including positioning transducers on each side of the fuel channel.
Id. (citing McClelland, figs. 1, 2). The Examiner determined that it would
have been obvious to one of ordinary skill in the art to
include the teaching of McClelland to improve a detection
system such as that of Beier et al as an application of a general
rule of the desirability to increase spatial resolution of
measurement; in the instant case so as to locate a similar array
of transducers-detectors around and opposite sides of said fuel
channel for the production of reflected signals from other sides
of the fuel channel and to recalculate a panoramic image of
[the] channel with good spatial resolution.
Id. at 5-6. The Examiner also determined that Beier motivates including
transducers on each side of the fuel channel because Beier “teach[es] that it
is possible and that it is their aim to measure at least the maximum width of
the spacer with a measuring error of less than 20 micrometer[s].” Id. at 6
(citing Beier, Abstract). Thus, the Examiner found that “[f]or fast
production of such high accuracy [it] is useful to have a parallel operation of
[a] plurality of transducers receivers around the fuel channel.” Id.
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Additionally, the Examiner found that “to supplement the transducers US
with additional transducers only a minor variation of relative distances of
calibration rods to the fuel channel would at most be required,” and thus
concluded that the “combination of Beier et al with the teaching by
McClelland et al is straightforward and has reasonable expectation of
success.” Id.
Appellants do not separately argue claims 4, 5, and 7-26. See
App. Br. 7-20; Reply Br. 1-11. We select claim 4 as representative.
Accordingly, claims 5 and 7-26 stand or fall with claim 4. See 37 C.F.R.
§ 41.37(c)(1)(vii) (2011); see also In re Lovin, 652 F.3d 1349, 1351
(Fed. Cir. 2011).
Appellants raise four arguments in response to this rejection:
(1) modifying Beier will impermissibly change its principle of operation
(App. Br. 7-17; Reply Br. 3-10); (2) Beier does not disclose a method to
calculate shape deviations of a fuel channel (App. Br. 10; Reply Br. 1-3);
(3) Beier’s combination with Scharpenberg will prevent Beier from
functioning in the manner intended (App. Br. 18-19); and (4) the cited
references fail to provide any reason to combine or modify the teachings of
the references to obtain the claimed invention and fail to provide a
reasonable expectation of success (id. at 19). We address each.
Beier’s Principle of Operation
Appellants’ main argument is premised upon two contentions:
(1) modifying Beier to provide additional ultrasonic probes (transducers) at
the same elevation as probes US1, US2, US3, US1B, US2B, and US3B is
not possible without the removal of the calibration rods, and (2) such
modification is impermissible because removal of the calibration rods would
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change the principle of operation of Beier’s device. See App. Br. 7-16;
see also id. at 17 (indicating that changing the position of the calibration
rods such that transducers are either behind the rods or between the rods and
the fuel channel will not allow Beier’s device to function properly).
A change in the principle of operation of the primary reference can, in
some circumstances, render a modification nonobvious. For example, a
modification suggested by an examiner was considered to be nonobvious
where the modification (1) necessitated a substantial reconstruction of the
primary reference, and (2) changed the basic principles under which the
primary reference was designed to operate. In re Ratti, 270 F.2d 810,
811-13 (CCPA 1959) (“This suggested combination of references would
require a substantial reconstruction and redesign of the elements shown in
[the primary reference] as well as a change in the basic principles under
which the [primary reference] construction was designed to operate.”
(emphasis added)).
Beier is directed to a method and device for inspecting a fuel element
in a nuclear reactor. Beier, col. 1, ll. 8-9. Beier explains:
Such a fuel element includes a bundle of fuel rods. At one end
of the fuel rods is a head part, and at the other end a foot part.
Situated between the head and foot parts are spacers disposed
above another at axial spacings. Fuel elements in boiling water
reactors are usually further surrounded by boxes.
Id. at col. 1, ll. 9-14. Because “[w]ear phenomena and damage to the fuel
elements can occur during operation of the reactor” (id. at col. 1, ll. 23-24),
Beier desires to provide a method and device to detect changes in a fuel
element in a simple way (id. at col. 1, ll. 66-67). Beier further explains:
The invention is based on the finding that changes which
are caused by the growth in the individual components of the
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fuel element, and other dimensional changes, for example
bowing, bending and twisting of fuel element structural parts
(such as spacers and fuel element boxes), impair the
functionality and are therefore to be detected during inspection
and measured.
Id. at col. 4, ll. 31-37.
Beier employs “ultrasonic probes US” that are “directed partly toward
the left-hand or right-hand outer surface of the spacer, and partly also toward
the end faces of a calibration rod CS of known length do.” Id. at col. 9,
ll. 5-8; figs. 1, 2. The ultrasonic probes “emit ultrasonic pulses which are
reflected at the outer surfaces of the spacer or the end faces of the calibration
rod CS.” Id. at col. 9, ll. 8-10. Beier describes the following with respect to
Figure 2:
it may be seen that the three ultrasonic probes US1, US2, and
US3 at three measuring points on the left-hand outer surface
FSA of the spacer FS measure the spacing of this spacer from
the corresponding, left-hand measuring arm MA. The outer
ultrasonic probes US4 and US5, by contrast, measure the
spacing of the end faces CA or CAˈ of the corresponding
calibration rod CS or CSˈ extending from left to right. The
spacings between these end faces CA and CAˈ, on the one
hand, and the measuring probes US4 and US5 differ, but are
known, and so these two probes US4 and US5 supply two
calibration points for the relationship between the propagation
time of the ultrasonic echo and the arc covered.
Id. at col. 9, ll. 24-37. “Corresponding probes US1B to US5B are situated
opposite the probes US1 to US5 on the right-hand arm MB,” and function in
the same way as probes US1 to US5 for measuring three points on the
opposite outer face FSB of the spacer and two calibration points on the
corresponding end faces of CB, CBˈ of the calibration rods. Id. at col. 9,
ll. 28-43. Beier also discloses that “[i]n the same way, in the plane lying
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therebelow, in which the ultrasonic probes USˈ shown in FIG.1 are situated,
three measuring points and two calibration points are formed in each case
for the two other mutually opposite sides of the spacer.” Id. at col. 9,
ll. 49-53.
As noted above, Appellants’ main argument is premised on the notion
that the Examiner’s proposed combination requires removal of Beier’s
calibration rods. See App. Br. 7-17; Reply Br. 3-10. The Examiner’s
proposed combination, however, does not require removal of the calibration
rods. Although the Examiner provided several counterarguments in
response to Appellants’ position, the following finding by the Examiner is
particularly persuasive: “(b) the function of the calibration rods CS only
involves their measurement through said additional ultrasonic probes US4
through US5B, for which the coordinate of the longitudinal axis of said
calibration rods in the lateral direction perpendicular to their longitudinal
axes is entirely irrelevant.” Ans. 24-25. Appellants interpret this statement
as “the Examiner tak[ing] the position that the control rods, CS, disclosed by
Beier and the disclosed calibration measurements using those control rods is
immaterial and irrelevant to the method of inspecting a fuel assembly
disclosed by Beier.” Reply Br. 3.
We disagree. This particular finding by the Examiner does not
suggest that the calibration rods and calibration are immaterial or irrelevant
to Beier’s method; rather, the Examiner explained that it is the coordinate of
the longitudinal axes of the calibration rods in the lateral direction
perpendicular to their longitudinal axes that is irrelevant. In other words, the
distance between the calibration rods and the outer surface of the spacer is
not disclosed as being so sacrosanct in Beier that the calibration rods cannot
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be repositioned further away from the outer surface of the spacer and still
perform their calibration function. Of course, the ultrasonic probes US4,
US5, US4B, and US5B would also be repositioned to align with the
repositioned calibration rods. And, Appellants have not convincingly
asserted that such repositioning is beyond the level of skill of one of
ordinary skill in the art.3
Further, Appellants have not persuasively explained why such
modification would change Beier’s principal of operation when Beier
discloses that “[t]he most important variables for assessing the relevant
spacer (here: the third spacer, ‘spacer 3’) is the maximum spacing Δmax
between opposite outer surfaces.” Beier, col. 10, ll. 4-6; see also id. at
col. 10, ll. 20-23 (explaining that the x-coordinate C(x) or y-coordinate C(y)
of the center point C is another interesting variable). In other words
Appellants have not explained why repositioning the calibration rods as
proposed by the Examiner’s combination would render Beier unable to
calculate these variables and hence change its principle of operation. Nor
have we been able to find any importance attributed by Beier to the distance
between the calibration rods and the outer surface of the spacer such that an
alteration of that distance would result in changing Beier’s principle of
operation. Thus, altering the distance between the rods and the outer surface
of the spacer is not changing a “basic principle” under which Beier was
designed to operate such that the Examiner’s proposed modification would

3 Nor do we see why adding means to calibrate the additional probes added
by the Examiner’s combination, such as adding calibration rods, is beyond
the level of one of ordinary skill in the art or why additional calibration rods
would alter Beier’s principle of operation. Contra Reply Br. 11.
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not have been obvious to one of ordinary skill in the art at the time of
invention. See Ratti, 270 F.2d at 813.
Appellants also contend that McClelland, Nakayasu, and
Scharpenberg do not teach how to modify Beier to obtain the presently
claimed invention without removing the calibration rods, which Appellants
assert are an essential element of Beier’s device. See App. Br. 17
(discussing McClelland), 17-18 (discussing Nakayasu), 19 (discussing
Scharpenberg in this context). As we explained above, however, the
Examiner’s proposed combination does not require removal of the
calibration rods. Accordingly, Appellants’ arguments that McClelland,
Nakayasu, and Scharpenberg do not teach how to modify Beier in this regard
are not persuasive.
Method to Calculate Shape Deviations of a Fuel Channel
Appellants also contend that while their claims are directed to
calculating shape deviations of a “fuel channel,” Beier discloses a method
and apparatus for inspecting a “fuel element.” Reply Br. 1; see App. Br. 10.
Appellants assert that a “fuel channel encloses a fuel element in a boiling
water reactor, and directs coolant up through the fuel assembly.”
Reply Br. 3. Appellants explain that Beier discloses removing the fuel
channel (which Appellants correctly note that Beier refers to as a “box” or
“lateral box”) prior to inspection of the fuel element and thus “substantially
teaches away from using the disclosed method to perform any type of
inspection or measurement of a fuel channel.” Id. Thus, Appellants contend
that Beier does not disclose a method to calculate shape deviations of a fuel
channel of a boiling water reactor as claimed. Id.
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We agree with Appellants that Beier is generally directed to
inspecting a fuel element of a boiling water reactor. See, e.g., Beier, col. 8,
ll. 29-31 (“Referring now to the figures of the drawings in detail and first,
particularly, to FIG. 1 thereof, there is shown how a fuel element FA of a
boiling-water reactor is inspected.”). Beier’s method of inspection,
however, is not limited to fuel elements; rather, Beier explicitly states that
the disclosed measuring device “can be used, for example, to measure the
boxes and the spacers in the case of boiling-water fuel elements.” Beier,
col. 11, ll. 49-51 (emphasis added). Further, Beier explains that it is not only
changes in the fuel element, but also changes in the boxes that impair the
functionality of boiling water reactors and thus should be detected during
inspection and measured. Id. at col. 4, ll. 31-37 (“The invention is based on
the finding that changes which are caused by the growth in the individual
components of the fuel element, and other dimensional changes, for
example bowing, bending and twisting of fuel element structural parts (such
as spacers and fuel element boxes), impair the functionality and are therefore
to be detected during inspection and measured.” (emphases added)).
Accordingly, Appellants’ argument—that Beier does not disclose a
method to calculate shape deviations of a fuel channel of a boiling water
reactor—is not persuasive.
Beier’s Combination with Scharpenberg
Appellants also assert that the Examiner’s reliance upon combining
Scharpenberg’s disclosure of supports using bars 25 at each level of
inspection 16, 17, and 18, with Beier is improper. App. Br. 18-19; see
Ans. 7-8. Specifically, Appellants contend that such combination would
also require the use of Scharpenberg’s support shafts 19 at each inspection
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level. Id. at 18. Appellants assert that Scharpenberg’s support shaft and
bars would prevent movement of Beier’s positioning device and thus
“prevent the device from functioning in the manner intended by Beier.” Id.
at 19.
Appellants’ argument assumes a finding by the Examiner that is not
specifically stated in the rejection as forming the basis for the combination
of the teachings of the references and is not commensurate in scope with the
claim language. Claim 4 does not require stabilizing the fuel channels at the
positions of inspection; rather, it broadly recites “stabilizing the fuel channel
at a plurality of positions along the length of the structure.” App. Br.,
Claims App’x 1 (emphasis added). Nor was the rejection premised upon
using bars 25 at each level of inspection. Rather, the Examiner found that
Scharpenberg’s use of bars 25 at each level of inspection, discloses
“locat[ing] the support systems in different elevation positions of said fuel
channel for the fuel channel position stabilization and improving an
accuracy of measurements.” Ans. 8; see also id. at 28 (noting that it is not
necessary to provide support shafts 19 exactly at the inspection levels
because nothing in the claim language so requires).
Accordingly, Appellants’ argument is not persuasive.
Reason to Combine/Reasonable Expectation of Success
Appellants assert that the cited prior art references “fail to provide any
reason for one of ordinary skill in the art to combine and/or modify the
teachings of the cited prior art references to obtain the claimed invention.”
App. Br. 19. Appellants similarly contend that the cited references “also fail
to provide one of ordinary skill in the art with a reasonable expectation of
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success without resort to a hindsight reconstruction of the presently claimed
method.” Id.
First, motivation need not be based on an explicit teaching in a
particular prior art reference. See, e.g., KSR Int’l Co. v. Teleflex Inc.,
550 U.S. 398, 418 (2007) (noting that “the analysis need not seek out precise
teachings directed to the specific subject matter of the challenged claims, for
a court can take account of the inferences and creative steps that a person of
ordinary skill would employ”); see also DyStar Textilfarben GmbH & Co.
Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1365-66
(Fed. Cir. 2006) (noting that an explicit teaching to combine “need not be
found in the prior art references themselves”); Alza Corp. v. Mylan Labs.,
Inc., 464 F.3d 1286, 1291 (Fed. Cir. 2006) (“There is flexibility in our
obviousness jurisprudence because a motivation may be found implicitly in
the prior art. We do not have a rigid test that requires an actual teaching to
combine . . . .”). Second, contrary to Appellants’ argument, the Examiner
explained why one of ordinary skill in the art would have combined the
references relied upon and provided reasons with rational underpinnings for
each combination. See Ans. 5-8. Appellants have not attempted to explain
why those reasons are insufficient or why one of ordinary skill in the art
would not have a reasonable expectation of success in light of the
Examiner’s detailed explanation and analysis.
Accordingly, we do not find Appellants’ bare assertions persuasive.

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DECISION
We AFFIRM the Examiner’s decision rejecting claims 4, 5, and 7-26.
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

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