11113746 (P.T.A.B. Jul. 29, 2013)

Ex Parte Dorr et al

Patent Trial and Appeal BoardJul 29, 2013

11113746 (P.T.A.B. Jul. 29, 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. 11/113,746 04/25/2005 Wolfgang Dorr MOH-P020037 9639 24131 7590 07/30/2013 LERNER GREENBERG STEMER LLP P O BOX 2480 HOLLYWOOD, FL 33022-2480 EXAMINER MONDT, JOHANNES P ART UNIT PAPER NUMBER 2894 MAIL DATE DELIVERY MODE 07/30/2013 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 WOLFGANG DORR and VOLKER LANSMANN ____________________ Appeal 2011-008101 Application 11/113,746 Technology Center 3600 ____________________ Before: JAMES P. CALVE, SCOTT A. DANIELS, and JEREMY M. PLENZLER, Administrative Patent Judges. PLENZLER, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-008101 Application 11/113,746 2 STATEMENT OF THE CASE Appellants seek our review under 35 U.S.C. § 134 of the Examiner’s decision rejecting claims 1-5 and 22-24. Claims 6-21 are cancelled. We have jurisdiction under 35 U.S.C. § 6(b). We REVERSE. CLAIMED SUBJECT MATTER Claim 1 is the sole independent claim and is reproduced below: 1. A fuel pellet for a nuclear reactor, comprising: a cylindrical body extending in an axial direction and a radial direction, said cylindrical body formed of granules composed of agglomerated particles of a nuclear fuel that have undergone a pressing operation in the axial direction of said cylindrical body and precipitations of a metallic phase that are positioned in grain boundaries of said granules to define a greater heat conductivity in the radial direction than in the axial direction of said cylindrical body. REJECTIONS1 1. Claims 1-5 and 22-24 are rejected under 35 U.S.C. § 112, first paragraph, as failing to comply with the enablement requirement; 2. Claims 1-5 and 22-24 are rejected under 35 U.S.C. § 112, second paragraph, as indefinite; and 1 The objections addressed by Appellants on pages 5-8 of their Appeal Brief are reviewable by timely petition to the Director under 37 C.F.R. § 1.181 and are not within the jurisdiction of the Board. See Manual of Patent Examining Procedure (MPEP) § 1201 (8th Ed., Rev. 9, Aug. 2012) (the Board will not ordinarily hear a question that is reviewable by petition). Appeal 2011-008101 Application 11/113,746 3 3. Claims 1-5 and 22-24 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Dehaudt (US 5,999,585; iss. Dec. 9, 1999) and Delafoy (WO 02/45096 A1; pub. Jun. 6, 2002)2. OPINION Enablement The Examiner explains that the “greater heat conductivity in the radial direction than in the axial direction of said cylindrical body,” as recited in claim 1, is not enabled by the Specification as originally filed because Figures 3 and 4 do not clearly show the precipitations to be oriented in one direction more than another direction (i.e., oriented more radially than axially). Ans. 7-8, 15. In addressing the Wands factors (See In re Wands, 858 F.2d 731, 737 (Fed. Cir. 1988)), the Examiner repeatedly states that one skilled in the art would not know how axial compression of an agglomerate of granules with metal precipitation would provide greater heat conductivity in the radial direction than the axial direction. Ans. 16. Appellants explain that due to the axial pressing operation, more grain boundaries between the granule grains run in the radial direction than in the axial direction. Br. 8 (citing Spec., p. 6, l. 20 – p. 7, l. 8). Appellants further explain that greater heat conductivity is present in the radial direction due to the precursor of the metallic phase disposed within the predominantly radial grain boundaries. Id. While Figures 3 and 4 may not clearly illustrate the predominantly radial disposition of the grain boundaries, this does not mean that one of skill in the art could not make and/or use the axially compressed agglomerate of granules with metal precipitation of the invention without 2 The Examiner relies on Delafoy (US 2004/0047445 A1; pub. Mar. 11, 2004) as the English language translation of Delafoy (WO 02/45096 A1). Ans. 8. Appeal 2011-008101 Application 11/113,746 4 undue experimentation. The Specification as originally filed clearly explains that a greater proportion of the grain boundaries run in the radial direction as a result of the axial pressing operation. See Spec., p. 6, ll. 22- 25. The Examiner does not allege that the structure recited in claim 1 is not enabled by the originally-filed application. As noted above, Appellants explain that the structure disclosed in the originally-filed application provides the claimed “greater heat conductivity in the radial direction” and the Examiner has not provided a reasonable basis to doubt Appellants’ explanation. We do not sustain the Examiner’s rejection of claims 1-5 and 22-24 as lacking enablement. Indefiniteness The Examiner indicates that claims 1-5 and 22-24 are also indefinite because the lack of enablement causes the metes and bounds of the claimed invention to be vague and ill-defined. Ans. 8. As explained above, the Examiner has not established that claims 1-5 and 22-24 lack enablement. Further, the Examiner has failed to identify any ambiguity in the claims. We do not sustain the Examiner’s rejection of claims 1-5 and 22-24 as indefinite. Obviousness The Examiner finds that Dehaudt discloses each of the features recited in claim 1 except the cylindrical shape of the pellet body. Ans. 9. The Examiner explains that the powder in Dehaudt discloses the claimed granules because a “powder” is particulate matter and a “granule” is a small Appeal 2011-008101 Application 11/113,746 5 particle and there is no size distinction made by Appellants to distinguish “powder” from “granule.” Id. Appellants argue that granule and powder have different meanings. Br. 16-18. During examination of a patent application, pending claims are given their broadest reasonable construction consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004); In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969). Appellants explain that granules are formed from several powder grains during granulizing. Br. 18. The Specification supports Appellants’ position, noting that particles of the starting powder are agglomerated in a granule grain. Spec., p. 6, ll. 16-17. We agree with Appellants that one skilled in the art would appreciate that “granule” and “powder” are different material structures having different material properties and are understood to have different meanings. Thus, the Examiner has failed to establish that Dehaudt discloses a fuel pellet having the claimed granules. Moreover, even if the powder in Dehaudt could be considered a “granule” under the broadest reasonable interpretation, it does not necessarily follow that the powder in Dehaudt would “define a greater heat conductivity in the radial direction than in the axial direction of said cylindrical body” in the fuel pellet. The Examiner’s rejection appears to be based on Dehaudt inherently disclosing the claimed heat conductivity of the fuel pellet, explaining that because the pressing step is carried out in Dehaudt, the resulting structure would include the claimed heat conductivity. Ans. 19. However, as Appellants explain, the granule in Appellants’ disclosure has a low stability allowing axial compression, contrary to the make-up of the powder in Dehaudt. Br. 18. The Examiner has not Appeal 2011-008101 Application 11/113,746 6 established that the fuel pellet of Dehaudt necessarily has the claimed heat conductivity because the Examiner has not established that the powder in Dehaudt would allow the required axial compression. We do not sustain the rejection of claim 1 or claims 2-5 and 22-24 which depend from claim 1. DECISION We REVERSE the Examiner’s decision to reject claims 1-5 and 22-24 as failing to comply with the enablement requirement. We REVERSE the Examiner’s decision to reject claims 1-5 and 22-24 as indefinite. We REVERSE the Examiner’s decision to reject claims 1-5 and 22-24 as obvious. REVERSED hh