Ex Parte Heibel et al

Patent Trial and Appeal Board

Mar 8, 2019

13644133 (P.T.A.B. Mar. 8, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/644,133 10/03/2012
26353 7590 03/12/2019
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
Michael D. Heibel
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
RTU2011-014UTILITY 2688
EXAMINER
DA VIS, SHARON M
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
03/12/2019 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):
guerral@westinghouse.com
spadacjc@westinghouse.com
coldrerj@westinghouse.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Exparte MICHAEL D. HEIBEL, DANIEL P. KISTLER, and
JORGE V. CARVAJAL
Appeal2017-003768
Application 13/644, 133
Technology Center 3600
Before WILLIAM A. CAPP, GEORGE R. HOSKINS, and
FREDERICK C. LANEY, Administrative Patent Judges.
HOSKINS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Michael D. Heibel et al. ("Appellants") 1 appeal under 35 U.S.C. § 134
from the Examiner's decision finally rejecting all pending claims 1-12 in
this application. The Board has jurisdiction over the appeal under 35 U.S.C.
§ 6(b ).
We REVERSE.
1 Westinghouse Electric Company LLC is the applicant and is identified as
the real party in interest. 37 C.F.R. § 1.46; Br. (filed Mar. 15, 2016), 2.
Appeal2017-003768
Application 13/644, 133
CLAIMED SUBJECT MATTER
Claim 1 is the sole independent claim on appeal, and it recites:
1. A power supply for a nuclear reactor in-core electronics
assembly, the power supply comprising:
a self powered power supply element comprising a material
that prior to being irradiated does not produce a substantially
measurable current capable of powering the in-core electronics
assembly and upon being irradiated by an external source of
radiation for a selected period of time produces the substantially
measurable current even after being removed from exposure to
the external source of radiation;
a power supply housing hermetically sealing the power
supply element from a coolant fluid within a core of a nuclear
reactor; and
an electrically conductive connector structured to connect to
the in-core electronics assembly to transport the substantially
measurable current to the in-core electronics assembly wherein
the substantially measurable current is sufficient to power the
in-core electronics assembly and communicate an output of the
in-core electronics assembly to a location outside of the nuclear
reactor without an auxiliary power input from outside of the
core.
Br. 13 ( Claims App.) ( emphases added).
REJECTIONS ON APPEAL 2
Claims 1-12 stand rejected under 35 U.S.C. § 112, second paragraph,
as indefinite.
2 A rejection of claim 4 under 35 U.S.C. § 112, first paragraph, for lack of
written description, has been withdrawn. See Final Act. (dated Jan. 29,
2016), 4--5 (rejection); Ans. (dated Sept. 1, 2016), 8 (withdrawal).
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Application 13/644, 133
Claims 1---6 and 8 stand rejected under 35 U.S.C. § I03(a) as
unpatentable over Goldstein (US 3,872,311, iss. Mar. 18, 1975) and Tower
(US 5,078,957, iss. Jan. 7, 1992).
Claim 7 stands rejected under 35 U.S.C. § I03(a) as unpatentable over
Goldstein, Tower, and Playfoot (US 4,237,380, iss. Dec. 2, 1980).
Claims 9-11 stand rejected under 35 U.S.C. § I03(a) as unpatentable
over Goldstein, Tower, and Fawks (US 2009/0154633 Al, pub. June 18,
2009).
Claim 12 stands rejected under 35 U.S.C. § I03(a) as unpatentable
over Goldstein, Tower, Fawks, and Foster (US 3,879,612, iss. Apr. 22,
1975).
ANALYSIS
A. Indefiniteness (claims 1-12)
Claim 1 recites a power supply element that "produce[ s] a
substantially measurable current capable of powering the in-core electronics
assembly," wherein the "current is sufficient to power the in-core electronics
assembly and communicate an output of the in-core electronics assembly to
a location outside of the nuclear reactor." Br. 13 (Claims App.).
The Examiner finds the quoted limitations of claim 1 fail to provide "a
clear-cut indication of the scope of the subject matter embraced by the
claim." Final Act. 5-6 (citing and summarizing case law authorities). The
Examiner specifically determines claim 1 "fails to recite the structure that
necessarily determines the assembly's power requirements." Id. at 6.
Further according to the Examiner, Appellants' Specification "fails to
establish any sort of concrete, numerical limits on the power requirements of
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Application 13/644, 133
the system." Id. The indefiniteness rejection of dependent claims 2-12 is
premised solely on the indefiniteness of their common parent claim 1. Id.
at 5---6.
Appellants contend the claim limitations at issue here are not
indefinite, because in-core detectors were in use prior to October 1996.
Br. 6 ( citing Br. Exh. 2 3). Given such usage in the specified time frame,
Appellants contend "it is hard to imagine that the power requirements of
such detectors were not well understood" as of Appellants' date of
invention. Id. In Appellants' view, a person of ordinary skill in the art
would "understand the measure of current necessary to power in-core
electronics assemblies," as well as "the measure of material required to
produce that current since that is solely an issue of quantity." Id.
The Examiner, in response, "does not dispute that [in-core] electronics
assemblies were well-known at the time of the invention." Ans. 9. In the
Examiner's view, however, that fact is insufficient to satisfy the definiteness
requirement, because the issue presented "is whether the power
requirements of such assemblies were so well-known in the art that one of
ordinary skill would know the metes and bounds of [ the claimed]
'substantially measurable current capable of powering the in-core electronics
assembly."' Id. The Examiner contends Appellants' argument and evidence
fall short in failing to reflect "the typical power requirements of the
well-known in-core electronics assemblies." Id.
The Examiner, further, determines claim 1 does not specify exactly
what components comprise the recited "in-core electronics assembly." Id.
3 NEA Nuclear Science Committee, In-Core Instrumentation and Core
Assessment, Proceedings of a Specialists' Meeting (Oct. 14--17, 1996).
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Application 13/644, 133
"That is, an electronics assembly having five electronic components most
likely would require more power than a similar assembly having only two
electronic components." Id. In the Examiner's view, claim 1 is thus
indefinite, because one cannot determine the amount of current that is
sufficient to power the in-core electronics assembly, without first knowing
the component(s) to be powered. Id. at 9-10.
"[T]he statutory language of 'particular[ity ]' and 'distinct[ ness] "' in
35 U.S.C. § 112, second paragraph, requires claims "to be cast in clear-as
opposed to ambiguous, vague, indefinite-terms." In re Packard, 751 F.3d
1307, 1313 (Fed. Cir. 2014). A claim is indefinite when it contains words or
phrases whose meaning is unclear to a person of ordinary skill in the art. Ex
parte McAward, Appeal No. 2015-006416, 2017 WL 3669566, at *2---6
(PTAB Aug. 25, 2017) (precedential); Ex parte Miyazaki, Appeal
No. 2007-3300, 2008 WL 5105055, at *4 (BPAI Nov. 19, 2008)
(precedential) ("[t]he test for definiteness under 35 U.S.C. § 112, second
paragraph, is whether 'those skilled in the art would understand what is
claimed when the claim is read in light of the specification'") ( quoting
Orthokinetics, Inc. v. Safety Travel Chairs, Inc., 806 F.2d 1565, 1576
(Fed. Cir. 1986)).
We determine claim 1 is not indefinite. There is no dispute that a
person of ordinary skill in the art would have been familiar with various
electronic components which may be found in an "in-core electronics
assembly" and which require a supplied current to operate, including
components which "communicate an output" to a location outside of the
nuclear reactor. Br. 13 ( Claims App.) ( claim language); id. at 6 (argument);
Ans. 9. We agree with Appellants' contention that a necessary corollary to
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Application 13/644, 133
such familiarity is a general understanding of the electric current power
requirement(s) of such devices. Br. 6. Therefore, in reciting a "current
capable of powering the in-core electronics assembly" ( emphasis added),
claim 1 sets a minimum electric current level that is clear to a person of
ordinary skill in the art.
The Examiner would require a mathematically precise description of
the minimum current level for the claim not to be indefinite. Final Act. 6;
Ans. 9. However, the definiteness "requirement is not a demand for
unreasonable precision," and "does not contemplate in every case a verbal
precision of the kind found in mathematics." Packard, 751 F.3d at 1313. In
addition, while it is true that different in-core electronics assemblies will
have different electric current power requirements (see Ans. 9-10), that fact
simply demonstrates the breadth of the claim, not its indefiniteness. See,
e.g., In re Gardner, 427 F.2d 786, 787-88 (CCPA 1970) (considering claims
directed to pharmaceutical compositions having antidepressant activity,
without specifying the subject(s) for whom the antidepressant activity would
have efficacy, and determining the claims were not indefinite because
"[b ]readth is not indefiniteness").
For the foregoing reasons, we do not sustain the rejection of
claims 1-12 as indefinite.
B. Obviousness over Goldstein and Tower (claims 1-6 and 8)
In rejecting claim 1 as having been obvious over Goldstein and
Tower, the Examiner finds Goldstein discloses a self-powered power supply
element (i.e., neutron detector 10) that satisfies each and every structural
limitation in claim 1 concerning such an element. Final Act. 7. However,
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the Examiner finds "Goldstein does not explicitly recite an in-core
electronics assembly" powered by a neutron detector 10. Id. ( emphasis
added).
The Examiner finds Tower discloses an in-core electronics assembly
(i.e., detector thimble 52). Id. (citing Tower, 5:38--44). The Examiner
determines it would have been obvious to use Goldstein's neutron
detector 10 as a power supply element within Tower, to provide electric
current to components of Tower's in-core electronics assembly requiring
power. Id.; Adv. Act. (dated Feb. 29, 2016) ("Goldstein is just as capable of
providing its radiation-induced current to [Tower's] in-core electronics
assembly as it is of providing the current to [Goldstein's] reactor control
room"). As a first motivation, the Examiner finds "Goldstein discloses that
such power supplies are reliable over long operating times." Final Act. 7
( citing Goldstein, 1:21-23). As a second motivation, the Examiner
determines the combination "would reduce the number of vessel
penetrations required" to power Tower's in-core electronics assembly. Id.
at 7-8.
Appellants concede Goldstein's neutron detector 10 produces electric
current, but argue that the produced current is not capable of (i) powering
Tower's in-core electronics assembly, and (ii) communicating an output of
Tower's assembly, without an auxiliary power input from outside of the
core, as claimed. Br. 8-9. Therefore, Appellants contend a preponderance
of the evidence does not support the Examiner's conclusion that it would
have been obvious to use Goldstein's neutron detector 10 as a power supply
element within Tower's detector thimble 52. Id.
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Application 13/644, 133
In response, the Examiner agrees with Appellants that "Goldstein may
very well not [produce] a ' [current] sufficient to power the in-core
electronics assembly' of Tower." Adv. Act.; see also Ans. 10 ("It is possible
that the very small current produced by Goldstein would not be capable of
providing the power necessary to use a typical in-core electronics
assembly."); Goldstein, 3:5-12 ("typical current levels" produced by
detector 10 "are of the order of 1 o-s amperes"). Nonetheless, the Examiner
takes the position that "there is no scope to this limitation and therefore any
current at all will meet this limitation," such as the 10-s amperes produced
by Goldstein's neutron detector 10. Adv. Act. (emphasis added); Ans. 10
("any device producing a current greater than zero meets the indefinite
limitation" of claim 1 ). The Examiner would require Appellants to
"demonstrate that the power supply of [Goldstein] does not produce enough
current to power the in-core electronics assembly of Tower," or amend the
claim, to overcome the rejection. Adv. Act.
We determine a preponderance of the evidence does not support the
Examiner's determination of obviousness. The Examiner construes the
"current" limitations in claim 1 to encompass any current at all that is greater
than zero. Adv. Act.; Ans. 10. That claim construction is unreasonably
broad.
[U]nder the broadest reasonable [claim] interpretation, the
Board's construction "cannot be divorced from the specification
and the record evidence," In re NTP, Inc., 654 F.3d 1279, 1288
(Fed. Cir. 2011 ), and "must be consistent with the one that those
skilled in the art would reach," In re Cortright, 165 F.3d 1353,
1358 (Fed. Cir. 1999). A construction that is "unreasonably
broad" and which does not "reasonably reflect the plain language
and disclosure" will not pass muster.
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Application 13/644, 133
Microsoft Corp. v. Proxyconn, Inc., 789 F.3d 1292, 1298 (Fed. Cir. 2015)
(quoting In re Suitco Surface, Inc., 603 F.3d 1255, 1260 (Fed. Cir. 2010)).
Claim 1 recites that the power supply element produces an electric current
that is "sufficient to power the in-core electronics assembly and
communicate an output of" the assembly to a location outside of the nuclear
reactor. Br. 13 (Claims App.). These claim requirements recite a minimum
level of current that is to be produced by the power supply element, and are
not indefinite as discussed above.
The evidence fails to establish that the typical current produced by
Goldstein's neutron detector 10, which is on the order 1 o-s amperes, is
capable of sufficiently powering the in-core electronics assembly within
Tower's detector thimble 52, and communicating an output of Tower's
assembly to a location outside of the nuclear reactor. Goldstein, 3:5-12;
Br. 8-9; Adv. Act.; Ans. 10. It is the Examiner's burden to establish that
Goldstein's neutron detector 10 has such a capability. It is not Appellants'
burden to establish that Goldstein's neutron detector 10 lacks such a
capability.
For the foregoing reasons, we do not sustain the rejection of claim 1
as having been obvious over Goldstein and Tower. The Examiner's
additional consideration of dependent claims 2---6 and 8 does not overcome
the identified deficiency as to their parent claim 1. See Final Act. 8-9. We,
therefore, likewise do not sustain the obviousness rejection of claims 2---6
and 8.
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C. Obviousness Over Goldstein, Tower, and
one or more of Playfoot, Fawks, and Foster
(claims 7 and 9-12)
The Examiner's additional consideration of dependent claims 7
and 9-12, and of Playfoot, Fawks, and Foster, does not address the
deficiency identified above as to their parent claim 1. See Final Act. 9-12.
Therefore, for the reasons provided above, we do not sustain the rejections
of claims 7 and 9-12 as having been obvious over Goldstein, Tower, and
one or more of Playfoot, Fawks, and Foster.
DECISION
The Examiner's decision to reject claims 1-12 is reversed.
REVERSED
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