Ex Parte Cheng

Patent Trial and Appeal Board

Oct 15, 2013

11045167 (P.T.A.B. Oct. 15, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/045,167 01/27/2005 Alexander Y.C. Cheng 12093/10019 4849
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 ALEXANDER Y.C. CHENG
____________________

Appeal 2011-007361
Application 11/045,167
Technology Center 3600
____________________

Before CHARLES N. GREENHUT, PATRICK R. SCANLON, and
BART A. GERSTENBLITH, Administrative Patent Judges.

SCANLON, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

Appeal 2011-007361
Application 11/045,167

2
STATEMENT OF THE CASE
Alexander Y.C. Cheng (“Appellant”) requests rehearing under 37
C.F.R. § 41.52 of our decision mailed July 17, 2013 (“Decision”), in which
we affirmed the Examiner’s decision rejecting claims 3-13. Appellant filed
the Request for Rehearing (“Request”) on September 17, 2013.
A request for rehearing must state with particularity the points
believed to have been misapprehended or overlooked by the Board in
rendering the original decision. 37 C.F.R. § 41.52. Appellant’s Request is
primarily directed to independent claim 3, which was rejected under 35
U.S.C. § 103(a) as being unpatentable over Impink (US 5,251,242, iss. Oct.
5, 1993) and Applicant’s Admission of Prior Art (“AAPA”). Appellant does
not contend that the Board misapprehended or overlooked any points
specifically relating to the merits of the rejections of claims 4-13.
OPINION
I.
The focus of the Request relates to our statement in the Decision that
“[w]e agree with Appellant that in the context of how the phrase is used in
Impink, ‘end to end’ means that the detectors 30-40 are arranged linearly but
not necessarily over the full length of the fuel assembly.” Decision 5.
Specifically, Appellant asserts:
[c]onsistent with this Board finding, the Examiner cannot be
correct in stating on page 4 of the Examiner’s Answer that ‘end
to end within a reactor assembly’ in Impink means, in other
words (‘i.e.’), ‘over the height of the core.’ Accordingly, the
Board, has implicitly concluded that the Examiner has erred as
to the ‘scope and content’ of the prior art reference Impink.
Appeal 2011-007361
Application 11/045,167

3
Request 6. This argument is not persuasive because, as stated on pages 5-6
of the Decision, we did not determine the Examiner erred in finding Impink
discloses that the stack of platinum detectors 30-40 extend over the full
height of the core or fuel assembly. Rather, we found that the Examiner’s
interpretation of “end to end” was erroneous.
Contrary to Appellant’s assertion, this misinterpretation is not
dispositive of whether Impink discloses that the stack of platinum detectors
30-40 extends over the full height of the core because the Examiner’s
reading of “end to end” was not the sole basis for the finding. As we noted
on page 4 of the Decision, the Examiner also relied on the passage at column
1, lines 5-23 of Impink to support of the finding. Regarding this passage, we
found that “Impink discloses that a vanadium detector extends ‘at least over
the full length of the stack of platinum segments and could extend the height
of the core.’ Impink, col. 1, 11. 19-21 (emphasis added).” Decision 5. We
also found that “Figure 7 of Impink shows the stack of platinum detectors
30-40 to be co-extensive with the vanadium detector 82.” Id. at 6; see also
Impink, col. 1, ll. 19-23 (describing that the vanadium detector could extend
the height of the core “along with a platinum detector of equal length”). We
thus determined “that Impink would suggest to one of ordinary skill in the
art that the stack of platinum detectors 30-40 could extend over the full
height of the core.” Id.
In other words, we found that Impink implicitly discloses this feature.
See MPEP § 2144.01 (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”) (quoting In re Preda, 401 F.2d 825, 826
Appeal 2011-007361
Application 11/045,167

4
(CCPA 1968)). Because Impink discloses that the vanadium detector can
extend over the height of the core and the stack of platinum detectors 30-40
can be equal in length to the vanadium detector, one skilled in the art would
reasonably be expected to draw the inference that Impink discloses an
embodiment in which the stack of platinum detectors 30-40 extends over the
full height of the core.
Accordingly, we disagree with Appellant’s contention that the
Examiner’s rejections of claims 3-13 should be reversed.
II.
Appellant also asserts that we mischaracterized several aspects of the
Examiner’s rejection and Appellant’s Briefs and requests that these items be
corrected. Request 7-8.
First, Appellant argues that, contrary to our position, the Examiner has
not made a finding that Impink discloses platinum detectors that “extend
‘end-to-end within a reactor assembly’ and ‘over the height of the core.’”
Id. at 7 (citing Decision 4). Instead, Appellant contends the Examiner
“found that ‘end to end within the reactor assembly’ in Impink means, in
other words (“i.e.”), ‘over the height of the core.’” Id. We disagree that our
statement on page 4 of the Decision mischaracterized the Examiner’s
finding. The Examiner points to Impink’s Abstract as disclosing that the
platinum detectors extend “end-to-end within a reactor assembly” and to the
passage at column 1, lines 5-23 of Impink as disclosing that the platinum
detectors extend “over the height of the core.” Ans. 4. Even though the
Examiner uses the term “i.e.” to join the two disclosures in Impink, the fact
remains that the Examiner cites these two different disclosures and is not
relying solely on the misinterpretation of “end to end” as discussed supra.
Appeal 2011-007361
Application 11/045,167

5
Second, Appellant questions our statement on page 5 of the Decision
that “Appellant also argues that Impink’s description of a detector that could
extend the height of the core necessarily means the total length of the
segmented platinum detectors 30-40 is less than the height of the core,”
asserting that no such reasoning can be found in pages 7-8 of Appellant’s
Appeal Brief. Id. Appellant’s third allegation of error is that “the Board
appears to misquote and/or present an incomplete description of Appellant’s
brief on page 5, lines 9-14 of the Decision” and this statement in the
Decision is “internally inconsistent.” Id. at 8. The second cited statement
on page 5 of the Decision reads:
Specifically, Appellant argues that because Impink discloses
that a single vanadium detector extends “at least over the full
length of the stack of platinum segments and could extend the
height of the core,” the vanadium detector “is longer than the
overall length of the stack of platinum detectors, which, thus,
must be less than the height of core.”
Decision 5.
We disagree that either of these statements mischaracterizes
Appellant’s briefs. Appellant’s Appeal Brief states “[t]he disclosure of
Impink at column 1, lines 5 to 23, would also be understood by one of
ordinary skill in the art to teach that the total length of the segmented
platinum detectors 30 to 40 is less than the height of the core.” App. Br. 7-8.
Appellant’s Appeal Brief also states:
Thus, Impink discloses that, where a single vanadium
detector is used in conjunction with the disclosed end to end
stack of platinum detectors illustrated in Figure 3 in the manner
illustrated in Figure 7, the vanadium detector has a length that
extends at least over the full length of the stack of platinum
segments, and can also extend beyond that length to the height
of the core. It is clear from that recitation of “at least over the
Appeal 2011-007361
Application 11/045,167

6
full length of the stack of platinum segments and could extend
the height of the core” that a height of at least over the full
length of the stack is less than a further extension to the height
of the core. Therefore, the full length of the stack of platinum
segments is less than the height of the core, and Impink does
not disclose or suggest that the overall length of the stack of
platinum detectors is equal to the height of the core. Instead,
Impink teaches that a vanadium detector that extends to the
height of the core is longer than the overall length of the stack
of platinum detectors, which, thus, must be less than the height
of core.
Id. at 8 (emphases added). These passages clearly support both of the
statements from page 5 of the Decision.
Fourth, regarding our statement that “Appellant’s basis for asserting
the stack of platinum segments must be less than the height of the core is
flawed” from page 6 of the Decision, Appellant asserts “the Board has not
accurately set forth a portion of Appellant’s arguments that are flawed.”
Request 8. However, the statement questioned by Appellant is taken from
the last sentence of the paragraph bridging pages 5 and 6 of the Decision.
That paragraph, in its entirety, sets forth the reasons why Appellant’s
assertion that the stack of platinum segments must be less than the height of
the core is flawed.
Fifth, Appellant argues that our statement that we “agree with the
Examiner that Impink would suggest to one of ordinary skill in the art that
the stack of platinum detectors 30-40 could extend over the full height of the
core” from page 6 of the Decision “is inconsistent with the Board’s earlier
statement that such a limitation was found to be ‘disclosed’ by the
Examiner.” Id. We disagree because the Decision does not indicate that we
found any limitation to have been disclosed by the Examiner. To the extent
Appeal 2011-007361
Application 11/045,167

7
Appellant meant to refer to our statement from page 4 of the Decision that
the “Examiner finds that Impink discloses a method of measuring neutron
flux including, inter alia, the step of providing at least three platinum
detectors 30-40 that extend ‘end-to-end within a reactor assembly’ and ‘over
the height of the core,” this statement is not inconsistent with the above-
quoted statement from page 6 of the Decision.
III.
Appellant argues that the rejection of claim 3 should be designated as
a new ground of rejection because the finding that Impink would suggest to
one of ordinary skill in the art that the stack of platinum detectors 30-40
could extend over the full height of the core “appears to be based on
inherency or obviousness.” Id. at 8-9.
As discussed supra, the Examiner relied in part on the passage at
column 1, lines 5-23 of Impink in rejecting claim 3, and we found that this
passage shows that Impink implicitly discloses that the stack of platinum
detectors 30-40 extends over the full height of the core. Contrary to
Appellant’s argument, our finding was not based on inherency.
However, although the Examiner cited column 1, lines 5-23 of Impink
in rejecting claim 3, the Examiner did not specify the details of Impink’s
disclosure that we have relied on in finding that Impink implicitly discloses
that the stack of platinum detectors 30-40 extends over the full height of the
core. We have thus arguably relied on a reasoning that was not previously
relied on by the Examiner and thus changes the “thrust” of the rejection. See
In re Kronig, 539 F.2d 1300, 1302-03 (CCPA 1976).
Therefore, in the circumstances of this case, we exercise discretion to
grant Appellant’s request to designate our affirmance of the rejection of
Appeal 2011-007361
Application 11/045,167

8
claim 3 as a new ground of rejection pursuant to 37 C.F.R. § 41.50(b). We
also designate our affirmance of the rejections of claims 4-13, which depend
from claim 3, as new grounds of rejection.
This decision on rehearing does not constitute a new decision on
appeal. Nor does it turn the Decision into a new decision. Accordingly,
pursuant to 37 C.F.R. § 41.52(a)(1), no request for rehearing from this
decision on rehearing is permitted. Also, because Appellant did not argue
persuasively in the rehearing request the merits of any rejection affirmed in
the Decision, Appellant is not entitled to any further relief under 37 C.F.R.
§ 41.50(b)(2) once the Decision has been modified to designate the
affirmance of the rejections of claims 3-13 as new grounds of rejection.
DECISION
Appellant’s Request is denied with respect to the arguments that the
Examiner’s rejections should be reversed and the Board mischaracterized
several aspects of the Examiner’s rejection and Appellant’s Briefs, but is
granted to the extent ordered below.
ORDER
The Board’s affirmance of the Examiner’s rejections of claims 3-13 is
designated as a new ground of rejection under 37 C.F.R. § 41.50(b).
Pursuant to the applicable sections of 37 C.F.R. § 41.50(b), Appellant,
WITHIN TWO MONTHS FROM THE DATE OF THIS DECISION, must
exercise the following option with respect to the new ground of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new evidence relating
to the claims so rejected, or both, and have the matter
Appeal 2011-007361
Application 11/045,167

9
reconsidered by the Examiner, in which event the proceeding
will be remanded to the Examiner. . . .
37 C.F.R. § 41.50(b) also provides “[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review.”
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).

GRANTED-IN-PART; 37 C.F.R. § 41.50(b)

Mp/rvb