Ex Parte Hettiarachchi et al

Patent Trial and Appeal Board

Dec 4, 2013

11647432 (P.T.A.B. Dec. 4, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte SAMSON HETTIARACHCHI, JUAN ALBERTO VARELA
and THOMAS POMPILIO DIAZ
____________

Appeal 2012-000713
Application 11/647,432
Technology Center 3600
____________

Before: JENNIFER D. BAHR, WILLIAM A. CAPP and
BEVERLY M. BUNTING, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellants seek our review under 35 U.S.C. § 134 of the final
rejection of claims 22-41. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM.
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THE INVENTION
Appellants’ invention relates to reducing radiation levels in nuclear
reactors. Spec. 1. Claim 22, reproduced below, is illustrative of the subject
matter on appeal.
22. A method for reducing post-shutdown
radiation levels of a nuclear reactor, the method
comprising:
injecting first and second chemicals together
to water in the reactor prior to reactor shutdown;
wherein the first and second chemicals
trigger release of one or more radioactive soluble
impurities from at least one out-of-core surface of
the reactor into the reactor water,
wherein the first chemical comprises
hydrogen,
wherein the second chemical comprises
platinum, and
wherein the platinum has a concentration in
the reactor water that is greater than or equal to
about 1 part per trillion and less than or equal to
about 75 parts per trillion.

THE REJECTIONS
The following rejections are before us for review:
1. Claims 22-38 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Appellants’ Admitted Prior Art (“APA”), Hettiarachchi
(US 5,818,893, iss. Oct. 6, 1998) and Andresen (US 5,135,709, iss. Aug. 4,
1992) and
2. Claims 39-41 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Hettiarachchi and Andresen.

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OPINION
Unpatentability of Claims 22-38
The Examiner finds that Appellants, in their Background section,
admit that it was known in the prior art (APA) to remove radioactive
impurities by chemical methods to reduce post-shutdown radiation levels.
Ans. 5 citing Spec, paras [0006] and [0009]. The Examiner acknowledges
that APA does not teach injecting first and second chemicals into the reactor
water prior to shut down to trigger release of radioactive impurities from a
reactor surface into the reactor water. Ans. 5.
The Examiner relies on Hettiarachchi as disclosing injection of first
and second chemicals into the reactor prior to shut down. Ans. 6. The
Examiner finds that Hettiarachchi’s first and second chemicals trigger the
release of radioactive impurities from reactor surfaces. Id. The Examiner
further finds that Hettiarachchi discloses a first chemical of hydrogen and a
second chemical of platinum in a concentration such that Appellants’
invention is not patentably distinct. Id. The Examiner concludes that it
would have been obvious to a person of ordinary skill in the art at the time
of the invention to perform the described method. Ans. 7. According to the
Examiner, a person of ordinary skill in the art would have done this to
mitigate stress corrosion cracking in a nuclear reactor. Id.
Appellants traverse the rejection first by arguing that APA is directed
to inhibiting and/or preventing the build-up of radioactive impurities which
Appellants distinguish from the release of impurities that have already been
deposited. App. Br. 17. This argument is unpersuasive as the Examiner
relied on Hettiarachchi as disclosing the release of deposited impurities.
Ans. 6. Non-obviousness cannot be established by attacking references
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individually where the rejection is based upon the teachings of a
combination of references. In re Merck & Co., 800 F.2d 1091, 1097 (Fed.
Cir. 1986); In re Keller, 642 F.2d 413, 425 (CCPA 1981).
Next, Appellants argue that the cited references fail to disclose that
the first and second chemicals are injected “together.” App. Br. 19. More
particularly, Appellants argue that Hettiarachchi discloses injecting platinum
alone and in the absence of hydrogen. Id. Appellants never offer or propose
their own construction of “together,” however, it is apparent from the
context of Appellants’ arguments that they interpret “together” as requiring
that the first and second chemicals are introduced into the reactor water at
the same time. App. Br. 19-20. In response, the Examiner notes that the
word “together” has multiple definitions. Ans. 14. In essence, the Examiner
notes that two items may be considered “together” if they are related either
spatially or temporally. Id. Here, the Examiner construes “together” as a
spatial relationship, while Appellants construe it as a temporal relationship.
The dispute between Appellants and the Examiner requires us to
construe the term “together.” 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). “Therefore, we look to the specification to see if it
provides a definition for claim terms, but otherwise apply a broad
interpretation.” In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007).
During prosecution, the term “together” did not appear in any of the
original 19 claims. See Original Claims. After the original claims had been
twice and finally rejected, Appellants filed a request for continued
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examination in which claims 1-21 were cancelled and new claims 22-41
were proposed. See January 26, 2010 Amendment Submitted with RCE. It
was in the January 26, 2010, claim amendments that Appellants first claimed
that the first and second chemicals were injected “together.” Id.
The word “together” does not appear in Appellants’ Specification.
Appellants have not brought to our attention any language in the
Specification that discloses that the first and second chemicals are injected
into the reactor, “at the same time,” “simultaneously,” or in terms of any
similar expression. The Specification teaches that the metal compound (i.e.,
platinum) should be injected at the rate from about 0.1 mg/hr to 10 mg/hr.
Spec. para. [0051]. In other words, the entire injection of platinum does not
occur immediately at any one moment in time. In the meantime, the
Specification contains no teaching as to when injection of the hydrogen
commences, how long it takes, or when it concludes.
The Examiner has indicated that, in the event that “together” is
construed as “simultaneously,” claim 1 would be rejected under 35 U.S.C. §
112(a) (formerly § 112, first paragraph) for failure to comply with the
written description requirement. Ans. 4, 14. Appellants were apprised of
the Examiner’s position that construing “together” as “simultaneously”
would subject the claims to rejection under 35 U.S.C. § 112(a) prior to
institution of the instant appeal. See Final Rejection mailed November 10,
2010.
In view of the lack of disclosure in the Specification that the first and
second chemicals are injected simultaneously, we apply the broadest
reasonable construction to the term “together.” In so doing, we agree with
the Examiner that two chemicals may be considered to be injected
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“together” if they are injected sequentially, rather than simultaneously, into
the same location. Accordingly, we will now apply the claims, as construed,
to the prior art.
Hettiarachchi is directed to a method for mitigating against stress
corrosion cracking in nuclear reactors. Col. 4, l. 30-44. Hettiarachchi
injects a platinum group metal into reactor water. Col. 4, l. 45 - Col 5, l. 38.
Subsequently, from about 1 to 72 hours after injection of the platinum group
metal, hydrogen is introduced into the reactor water. Col. 7, ll. 45-49.
Although the hydrogen is not injected simultaneously with the platinum
group metal, it is injected into the same location, i.e., the reactor water. This
is sufficient to satisfy the claim limitation directed to injecting first and
second chemicals “together” under the broadest reasonable construction of
“together.”
Appellants next argue that the cited references fail to disclose
triggering the release of one or more radioactive impurities from a reactor
surface. App. Br. 21. Appellants argue that Hettiarachchi merely discloses
the release of ionic materials, but not radioactive materials. Reply Br. 4. In
response, the Examiner states that it is inherent that injection of hydrogen
and platinum will trigger the release of radioactive impurities from a reactor
surface; otherwise, the claimed invention would be inoperable. Ans. 12-13.
Appellants offer neither evidence nor technical reasoning to rebut the
Examiner’s determination of inherency. See Reply Br. 4-8.
We believe the Examiner’s determination that Hettiarachchi
inherently releases radioactive materials is correct. Hettiarachchi injects the
same chemicals into the same environment to accomplish the same purpose
as the claimed invention, namely, to mitigate against stress corrosion
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cracking. The fact that Appellants may have discovered a new result from a
previously known process does not render the old process patentable. See
Bristol-Myers Squibb, Co. v. Ben Venue Labs, Inc., 246 F.3d 1368, 1376
(Fed. Cir. 2001) (Newly discovered results of known processes directed to
the same purpose are not patentable because such results are inherent) .
Finally, Appellants argue that the claimed invention uses a different
concentration of platinum than Hettiarachchi, which difference renders the
claimed invention patentable. App. Br. 21-22. In response, the Examiner
states that Hettiarachchi discloses a range of “up to” 2000 ppb, which
includes Appellants’ claimed range. Ans. 15. In addition, the Examiner
observes that the upper limit of the claimed range, 0.075 ppb, is only 0.025
ppb less than a 0.1 ppb concentration value disclosed in Hettiarachchi.
Ans. 16, Hettiarachchi, col. 6, l. 29.
A prima facie case of obviousness exists where the claimed ranges do
not overlap but are close enough that one skilled in the art would have
expected them to have the same properties. Titanium Metals Corp. of Am. v.
Banner, 778 F.2d 775, 783 (Fed. Cir. 1985). Appellants offer neither
evidence nor technical reasoning to rebut the Examiner’s prima facie case.
Appellants disclose a myriad of concentrations and concentration ranges in
their specification, including ranges that overlap with Hettiarachchi. Spec.
paras. [0052] – [0057]. No effort is made in the Specification, or elsewhere
in the record, to delineate that any particular disclosed range is critical to the
invention or produces unexpected results vis-à-vis other disclosed
concentrations. Ans. 16. Under the circumstances, we find that Appellants
have failed to rebut the Examiner’s prima case of obviousness relative to the
platinum concentration limitation in claim 1.
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In view of the foregoing discussion, we believe the Examiner’s
findings of fact are supported by a preponderance of the evidence and that
the Examiner’s legal conclusion of unpatentability is well-founded.
Accordingly, we sustain the Examiner’s unpatentability rejection of claims
22-38.
Unpatentability of Claims 39-41
Appellants do not present separate arguments for the patentability of
claims 39-41. App. Br. 15-22. Thus, claims 39-41stand or fall with claims
22-38. Accordingly, we sustain the rejection of claims 39-41.

DECISION
The decision of the Examiner to reject claims 22-41 is affirmed.
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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