Ex Parte Hyde et al

Patent Trial and Appeal Board

Aug 11, 2016

12586924 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/586,924
136716 7590
HolzerIPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
0912912009 Roderick A. Hyde
08/15/2016
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.
365017CIP/0707-032-006-CI 7387
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
08/15/2016 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):
docket@holzerIPlaw.com
docketing@terrapower.com
hiplaw@blackhillsip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RODERICK A. HYDE,
MURIEL Y. ISHIKAWA, NATHANP. MYHRVOLD,
JOSHUA C. WALTER, THOMAS ALLAN WEA VER,
LOWELL L. WOOD, JR., and VICTORIA Y.H. WOOD
Appeal2014-004961
Application 12/586,924
Technology Center 3600
Before JAMES P. CAL VE, WILLIAM A. CAPP, and
BRANDON J. WARNER, Administrative Patent Judges.
CAL VE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134 from the final rejection of
claims 1, 5-7, 11-13, 20-22, 29, 30, 42--44, 53, 54, 56, 57, 67, 73, 78, 79,
81,84, 88-90,94--96, 103, 104, 106, 107, 111, 123-125, 127, 129, 134, 135,
137, 138, 140, 153, 154, and 157-160. Notice of Appeal, Sept. 24, 2013.
We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.
Appeal2014-004961
Application 12/586,924
CLAIMED SUBJECT MATTER
Claims 1 and 84 are independent and are reproduced below.
1. A system, comprising:
means for thermoelectrically converting heat generated
with a nuclear reactor to electrical energy; and
means for selectively transferring the electrical energy to
at least one operation system of the nuclear reactor.
84. An apparatus, comprising:
at least one thermoelectric device for thermoelectrically
converting heat generated with a nuclear reactor to electrical
energy; and
activation circuitry for selectively transferring the
electrical energy from at least one electrical output of the at
least one thermoelectric device to at least one operation system
of the nuclear reactor.
REJECTIONS 1
Claims 1, 5-7, 11-13, 20-22, 29, 30, 42--44, 53, 54, 56, 57, 67, 73,
78, 79, 81,84, 88-90,94--96, 103, 104, 106, 107, 111, 123-125, 127, 134,
135, 137, 138, 140, 153, 154, and 157-160 are rejected under 35 U.S.C.
§ 112, first paragraph, for lack of enablement.
Claims 1, 5-7, 11-13, 20-22, 29, 30, 42--44, 53, 54, 56, 57, 67, 73,
78, 79, 81,84, 88-90,94--96, 103, 104, 106, 107, 111, 123-125, 127, 134,
135, 137, 138, 140, 153, 154, and 157-160 are rejected under 35 U.S.C.
§ 112, second paragraph, for indefiniteness.
Claims 1, 5-7, 11-13, 20, 22, 29, 43, 44, 53, 54, 56, 57, 67, 73, 84,
88-90, 94--96, 104, 124, 125, 127, 134, 135, 137, 138, 140, and 153 are
1 The Examiner withdrew the rejection of claims 29 and 42--44 under 35
U.S.C. § 112, fourth paragraph. Ans. 3. The pending objections to the
drawings, specification, and claims (Final Act. 7-9, 13) are petitionable
matters, not appealable matters, and are not subject to review on this appeal.
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Appeal2014-004961
Application 12/586,924
rejected under 35 U.S.C. § 102(b) as anticipated by French (US 4,699,754,
iss. Oct. 13, 1987).
Claims 21, 78, 79, 103, and 157 are rejected under 35 U.S.C. § 103(a)
as unpatentable over French and Boncodin (US 7,493,974 Bl, iss. Feb. 24,
2009).
Claims 30, 81, 111, 159, and 160 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over French and John (US 2008/0300660 Al, pub.
Dec. 4, 2008).
Claims 42, 106, 107, 123, 154, and 158 are rejected under 35 U.S.C.
§ 103(a) as unpatentable over French and Gilley (US 5,650,904, iss. July 22,
1997).
ANALYSIS
Lack of Enablement
The Examiner found that the rejected claims are directed to a system
for thermoelectrically converting heat to electrical energy with "essentially a
black box with no description of the internals thereof." Final Act. 10. The
Examiner found that the Specification does not describe the internals of the
system to enable the device to perform all of the claimed features, such as
converting energy, transferring energy, and driving a pump. Id. The
Examiner stated that undue experimentation would have been required to
make or use the invention due to this lack of direction. Ans. 5.
Appellants argue that the Examiner's conclusory statement does not
establish undue experimentation without analyzing the Wands factors.
Appeal Br. 21-24. Appellants argue that the Examiner has not considered
French, which must provide an enabling disclosure to be applied as prior art,
as evidence of the knowledge of a skilled artisan. See Reply Br. 15-16.
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Appeal2014-004961
Application 12/586,924
"The enablement requirement is satisfied when one skilled in the art,
after reading the specification, could practice the claimed invention without
undue experimentation." AK Steel Corp. v. Sollac, 344 F.3d 1234, 1244
(Fed. Cir. 2003) (quoting In re Wands, 858 F.2d 731, 736-37 (Fed. Cir.
1988)); see Auto. Techs. Int'!, Inc. v. BMW of N. Am., Inc., 501F.3d1274,
1282 (Fed. Cir. 2007) (citing AK Steel and Wands); MANUAL OF PATENT
EXAMINING PROCEDURE ("MPEP") § 2164.08 (9th ed., rev. 7, Nov. 2015)
("The Federal Circuit has repeatedly held that 'the specification must teach
those skilled in the art how to make and use the full scope of the claimed
invention without "undue experimentation'""; "what is well-known is best
omitted" (internal citations omitted)). Factors to consider in determining if
undue experimentation is required are: (1) the quantity of experimentation
needed, (2) the amount of direction or guidance presented, (3) the presence
or absence of working examples, (4) the nature of the invention, (5) the state
of the prior art, ( 6) the level of ordinary skill in the art, (7) the predictability
or unpredictability of the art, and (8) the breadth of the claims. See Wands,
858 F.2d at 737; MPEP § 2164.0l(a) Undue Experimentation Factors. The
PTO bears an initial burden of explaining why the claim scope is not enabled
by the specification. In re Wright, 999 F.2d 1557, 1561---62 (1993).
"Whether undue experimentation is required 'is not a single, simple
factual determination, but rather is a conclusion reached by weighing many
factual considerations."' Streck, Inc. v. Research & Diagnostic Sys., Inc.,
665 F.3d 1269, 1288 (Fed. Cir. 2012) (citation omitted). Without such a
factual inquiry, we cannot sustain this rejection. Moreover, the Specification
provides examples of thermoelectric devices in more detail (Spec. i-fi-f 12, 37-
44) than French (1 :24--46, Fig. 2), which is cited to anticipate the claims.
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Appeal2014-004961
Application I2/586,924
Indefiniteness
The Examiner found that the "means for" limitations in claims I, 5-7,
I I-I3, 20-22, 29, 30, 42--44, 53, 54, 56, 57, 73, 78, 79, 8I, and I59 are not
disclosed in the Specification, which only gives examples of structures that
can be used. Final Act. I 0-I I; Ans. 6.
Appellants argue that the Examiner did not determine whether the
Specification discloses corresponding structure of the means-plus-function
limitations, as required. Appeal Br. 30-3I, 34. We agree.
A skilled artisan would understand the "means for thermoelectrically
converting heat generated with a nuclear reactor to electrical energy" to be
disclosed in the Specification as thermoelectric devices I 04 that comprise a
junction of two materials with different Seebeck coefficients of various
materials that may convert the heat produced by nuclear reactor I 02 to
electrical energy. See Spec. i-fi-f I2-I4, 37--44, Figs. IA, ID, IE, 3-5.
Appellants disclose activation circuitry I 06 as a device (id. i-fi-126-27,
Fig. IB) that transfers electrical energy from thermoelectric device I 04 to
operation systems I I 0 of nuclear reactor system I 00, such as control system
I28, monitoring system I34, warning system I36, shutdown system I38, or
coolant system I 40, in response to a condition (id. i-fi-f I 2-32, Figs. IC, 2).
That a claim is broad does not mean the claim is indefinite.
We agree with the Examiner that the "means for thermoelectrically
converting heat" in claim I does not provide antecedent basis for "the at
least one thermoelectric device" in claim 30, which depends from claim I.
Appellants do not address this rejection. See Appeal Br. 25-34. Thus, we
sustain the rejection of claim 30 on this basis, but we do not sustain the
rejection of any of the other claims that were rejected for indefiniteness.
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Appeal2014-004961
Application 12/586,924
Anticipation by French
The Examiner found that French discloses the claimed means for
thermoelectrically converting nuclear reactor heat to electrical energy and
means for selectively transferring that electrical energy to an operating
system of the nuclear reactor as recited in claims 1 and 84. Final Act. 14--
15. The Examiner found that the thermoelectric electromagnetic pump
(TEMP) of French converts heat to electrical energy and transfers that
energy to the pumping portion of the auxiliary pumping system. Ans. 6-7.
Appellants argue that French's TEMP does not selectively transfer
electrical energy to an operation system of a nuclear reactor, as claimed, but
instead consumes the electrical energy that it produces. Appeal Br. 57-59.
Appellants argue that the TEMP is an integrated unit that does not transfer
electrical energy in the nuclear reactor system. Reply Br. 21-23. We agree.
The Examiner has not established by a preponderance of evidence that
French discloses "means for selectively transferring" or "activation circuitry
for selectively transferring" electrical energy to at least one operation system
of a nuclear reactor, as recited in independent claims 1 and 84. French does
disclose that "TEMP 22 generates a magnetic field using electrical energy
from thermoelectric elements driven by the heat of the hot metal [coolant]
28" and this magnetic field moves the electrically conductive coolant 28.
French, 3:20-25, Fig. 2. Even ifthe electromagnetic pump of TEMP 22 is
considered to be an operating system of the nuclear reactor, and we have no
findings from the Examiner in this regard, the Examiner has not explained
how French selectively transfers electrical energy from the thermoelectric
device of TEMP 22 to the electromagnetic pump of TEMP 22 using any type
of "activation circuitry" or the other claimed means. Final Act. 14--15.
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Appeal2014-004961
Application 12/586,924
French indicates that TEMP 22 is self-starting and self-regulating.
French, 1:24--27. TEMP 22 automatically pmnps metal coolant to a higher
pressure using heat from the coolant and continues to do so upon a nuclear
shutdown until the coolant temperature decreases to the point that TEMP 22
ceases to operate. Id. at 2: 1-22. The Examiner has not shown that French
discloses activation circuitry or means for selectively transferring electrical
energy to an operation system of the nuclear reactor, as recited in claims 1
and 84, or equivalent structures to the claimed means. See MPEP § 2183.
Thus, we do not sustain the rejection of claims 1, 5-7, 11-13, 20, 22,
29,43,44,53,54,56,57,67, 73, 84, 88-90,94--96, 104, 124, 125, 127, 134,
135, 137, 138, 140, and 153 as anticipated by French.
Prior art rejections under 35 US.C. § 103(a)
The Examiner rejected claims 21, 30, 42, 78, 79, 81, 103, 106, 107,
111, 123, 154, and 157-160 as being unpatentable over French in view of
Boncodin; John; or Gilley. Final Act. 19-21. The Examiner relied on
Boncodin, John, or Gilley to teach additional features of these claims rather
than to cure deficiencies of French as to claims 1 and 84, from which these
claims depend, as discussed above. See Appeal Br. 61-73. Thus, we do not
sustain these rejections of these claims.
DECISION
We AFFIRM the rejection of claim 30 under 35 U.S.C. § 112, second
paragraph, for indefiniteness, and REVERSE the rejections of claims 1, 5-7,
11-13,20-22,29,30,42--44,53,54,56,57,67, 73, 78, 79, 81, 84, 88-90,
94--96, 103, 104, 106, 107, 111, 123-125, 127, 129, 134, 135, 137, 138, 140,
153, 154, and 157-160 on all remaining grounds asserted by the Examiner.
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Appeal2014-004961
Application 12/586,924
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED-IN-PART
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