Ex Parte Caine et al

Patent Trial and Appeal Board

Sep 21, 2018

13340918 (P.T.A.B. Sep. 21, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/340,918 12/30/2011
33727 7590 09/25/2018
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
FIRST NAMED INVENTOR
Thomas Caine
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.
24NS253569 6017
EXAMINER
GARNER, LILY CRABTREE
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
09/25/2018 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
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte THOMAS CAINE, ADRIAN MISTREANU,
and RUSSELL A. SEEMAN
Appeal2017-011852 1
Application 13/340,9182
Technology Center 3600
Before NINA L. MEDLOCK, KENNETH G. SCHOPPER, and
TARA L. HUTCHINGS, Administrative Patent Judges.
HUTCHINGS, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner's final
rejection of claims 1-3, 5-7, 15, 17, and 19. We have jurisdiction under
35 U.S.C. § 6(b ).
1 Our decision references Appellants' Appeal Brief ("App. Br.," filed
May 17, 2017) and Reply Brief ("Reply Br.," filed Sept. 26, 2017), and the
Examiner's Answer ("Ans.," mailed Aug. 31, 2017), Advisory Action
("Adv. Act.," mailed Mar. 17, 2018), Final Office Action ("Final Act.,"
mailed Dec. 22, 2016).
2 Appellants identify General Electric Company as the real party in interest.
App. Br. 1.
Appeal2017-011852
Application 13/340,918
We REVERSE.
CLAIMED INVENTION
Appellants' claimed invention "relate[ s] generally to nuclear reactors,
and more particularly to a method and apparatus for a high-temperature
deposition solution injector to deliver an ambient temperature deposition
solution to a high temperature, high pressure feed-water flow line." Spec.
iT 1.
Claims 1 and 19 are the independent claims on appeal. Claim 1,
reproduced below with bracketed notations added, is illustrative of the
claimed subject matter:
1. A method of injecting a deposition solution into a
high-temperature feed-water pipe, comprising:
[(a)] determining an expected boundary layer depth of
fluid flowing within the feed-water pipe;
[(b)] inserting an injection tube of an injector through a
side of the feed-water pipe so that a longitudinal length of the
injection tube is positioned to traverse the fluid flowing within
the feed-water pipe, the injection tube defining an injection slot
along a portion of the longitudinal length of the injection tube,
[( c )] extending the injection tube into the feed-water pipe
such that the injection slot extends beyond the expected depth of
the boundary layer,
[(d)] rotating the injection tube to locate the injection slot
on a downstream side of the injection tube, relative to a direction
of the fluid flowing within the feed-water pipe, [and]
[(e)] injecting, using the injector, the deposition solution
into the feed-water pipe,
[(f)] wherein the extending of the injection tube into the
feed-water pipe includes the distal end of the injection tube being
extended into the feed-water pipe, a distalmost end of the
injection tube being extended into the feed-water pipe by no
more than 20% greater than the expected depth of the boundary
layer.
2
Appeal2017-011852
Application 13/340,918
REJECTIONS 3
Claims 1-3, 15, and 17 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Cappellino (US 6,869,213 B2, iss. Mar. 22, 2005), Fraser
(WO 2009/065220 Al, pub. May 28, 2009), and Lamminen
(CA 2438988 Al, pub. Sept. 19, 2002). 4' 5
Claims 5-7 and 19 are rejected under 35 U.S.C. § I03(a) as
unpatentable over Cappellino, Fraser, Lamminen, and Appellants' Admitted
Prior Art. 6
ANALYSIS
Independent Claim 1, and Dependent Claims 2, 3, 15, and 17
We are persuaded by Appellants' argument that the Examiner erred in
rejecting independent claim 1 under 35 U.S.C. § I03(a), because Cappellino
does not disclose limitation (a), as recited in claim 1. App. Br. 10-12; see
3 The Examiner has withdrawn the rejection of the claims under 35 U.S.C.
§ 112, second paragraph, as indefinite. Adv. Act. 2. The Examiner also has
withdrawn the rejection of the claims under 35 U.S.C. § I03(a) over
Cappellino and Appellants' Admitted Prior Art. Ans. 3.
4 In the Final Action, the Examiner applied twelve additional references to
reject the claims. See Final Act. 23, 27-28. However, in the Advisory
Action and the Answer, the Examiner clarified the rejection, stating that
these additional references should have been left out of the heading and the
body of the rejection, because they are supplemental evidence. See Adv.
Act. 2; see also Ans. 3--4.
5 We treat the Examiner's identification of canceled claim 18 among the
claims subject to this rejection as inadvertent. See Final Act. 23; see also
Ans. 3. We also treat the Examiner's analysis at pages 32-39 of the Final
Office Action as applying to independent claim 19, and not canceled claim
18.
6 The Examiner clarified the rejection to omit twelve additional references
that the additional references identified and analyzed in the rejection of these
claims. Ans. 10.
3
Appeal2017-011852
Application 13/340,918
also Reply Br. 3---6. We have reviewed the portions of Cappellino cited by
the Examiner for this limitation. See Final Act. 23-24 ( citing Cappellino,
Fig. 5; col. 1, 11. 27-29, 45-55; col. 2, 11. 18-21, 53-57; col. 2, 1. 66- col. 3,
1. 7; col. 4, 1. 61---col. 5, 1. 1). Yet, we find nothing that discloses or suggests
determining an expected boundary layer depth of fluid flowing within the
feed-water pipe, as required by claim 1 's limitation (a).
With reference to Figure 1, Cappellino describes a known method of
injecting a chemical that involves using chemical injection piping arranged
perpendicular to a main process piping to inject the chemical. Cappellino,
col. 1, 11. 14--23. However, this method does not introduce the chemical at
an optimal location for entry into the mixer - namely, a zone of highest
shear and turbulence, which is "generally not adjacent to the piping walls."
Id. at col. 1, 11. 24--30. With reference to Figure 2, Cappellino describes
another known method of injecting a chemical uses orifice plates in a main
processing pipe. Id. at col. 2, 11. 34--35. The orifice plates add turbulence
and mix the chemical before entering the mixer. Id. at col. 1, 34--40.
However, the arrangement suffers from some of the chemical: (1) entering
the mixer rotor at less than optical locations ( such as areas of low shear and
turbulence), and (2) bypassing the mixer rotor by passing around the outside
of the mixer rotor. Id. at col. 1, 11. 45-52. Therefore, Cappellino proposes
introducing the chemical near the rotor periphery where shear and
turbulence are highest. Id. at col. 2, 11. 18-21. A slotted injection pipe is
positioned with at least a 0.5 inch clearance between the slotted injection
pipe and the bottom of the process pipe, and is positioned away from the top
and bottom of the process pipe by at least 20% of the mixer stationary vane
height. Id. at col. 2, 1. 66---col. 3, 1. 5; see also id. at col. 4, 1. 62---col. 5, 1. 1.
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Appeal2017-011852
Application 13/340,918
Thus, the exact location of the slotted injection pipe 100 depends on the
height of the stationary vanes of the mixer, not a boundary layer depth.
The Examiner acknowledges that "Cappellino does not use the
particular term 'boundary layer.'" Final Act. 25. Nonetheless, the Examiner
finds that "determining the boundary layer depth of fluid flowing within the
feed-water pipe is inherent to the disclosure and design of Cappellino,"
because Cappellino teaches that the zone adjacent to the process piping walls
is not an optimal entry of the chemical into the mixer. See id. at 25-26
( citations omitted). But to establish inherency, more than speculation is
required. In particular, the Examiner must provide evidence and/or technical
reasoning that makes "clear that the missing descriptive matter is necessarily
present in the thing described in the reference, and that it would be so
recognized by persons of ordinary skill." Continental Can Co. v. Monsanto
Co., 948 F.2d 1264, 1268 (Fed.Cir.1991). "Inherency ... may not be
established by probabilities or possibilities. The mere fact that a certain
thing may result from a given set of circumstances is not sufficient." Id.
at 1269 (quoting In re Oelrich, 666 F.2d 578,581 (CCPA 1981)).
The Examiner speculates here that an expected boundary layer depth
of fluid flowing within the feed-water pipe is determined. But the Examiner
presents no evidence or technical reasoning to support an inherency finding.
Therefore, we do not sustain the Examiner's rejection under 35 U.S.C.
§ 103(a) of independent claim 1, and dependent claims 2, 3, 15, and 17.
Dependent Claims 5-7
The rejection of dependent claims 5-7 does not cure the deficiency in
the Examiner's rejection of independent claim 1. Therefore, we do not
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Appeal2017-011852
Application 13/340,918
sustain the Examiner's rejection under 35 U.S.C. § 103(a) of dependent
claims 5-7 for the same reasons set forth above with respect to claim 1.
Independent Claim 19
Claim 19 includes language substantially similar to the language of
claim 1, and the Examiner relies on the same erroneous findings discussed
with respect to claim 1 to reject claim 19. See Final Act. 32-39. Therefore,
we do not sustain the Examiner's rejection under 35 U.S.C. § 103(a) of
independent claim 19 for the same reasons set forth above with respect to
claim 1.
DECISION
The Examiner's rejections of claims 1-3, 5-7, 15, 17, and 19 under
35 U.S.C. § 103(a) are reversed.
REVERSED
6