Ex Parte Hyde et al

Patent Trial and Appeal Board

Aug 11, 2016

12462203 (P.T.A.B. Aug. 11, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO.
12/462,203
136716 7590
HolzerIPLaw, PC
216 16th Street
Suite 1350
Denver, CO 80202
FILING DATE FIRST NAMED INVENTOR
0713012009 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.
365014CIP/0707-032-006-CO 9890
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
Appeal2014-008527
Application 12/462,203
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 64, 67-70, 74, 77, 79-81, 85, 93, 99-101, 104, 110, 114--116, 120,
121, 123, and 127. Notice of Appeal, Dec. 19, 2013. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.
Appeal2014-008527
Application 12/462,203
CLAIMED SUBJECT MATTER
Claim 64, the sole independent claim on appeal, is reproduced below.
64. A system, comprising:
means for, upon a nuclear reactor shutdown event,
thermoelectrically converting heat generated with
a nuclear reactor to electrical energy; and
means for supplying the electrical energy to at least one
mechanical pump of the nuclear reactor.
REJECTIONS
Claims 64, 67-70, 74, 77, 79-81, 85, 93, 99-101, 104, 110, 114--116,
120, 121, 123, and 127 are rejected under 35 U.S.C. § 112, first paragraph,
for lack of enablement.
Claims 64, 67-70, 74, 77, 79-81, 85, 93, 99-101, 104, 110, 114--116,
120, 121, 123, and 127 are rejected under 35 U.S.C. § 112, second
paragraph, for indefiniteness.
Claims 64, 67-70, 74, 77, 79-81, 85, 93, 99-101, 114--116, and 123
are rejected under 35 U.S.C. § 102(b) as anticipated by French (US
4,699,754, iss. Oct. 13, 1987).
Claim 104 is rejected under 35 U.S.C. § 103(a) as unpatentable over
French and Klein (US 3,277,321, iss. Oct. 4, 1966). 1
Claim 110 is rejected under§ 103(a) as unpatentable over French and
Hampel (US 4,851,183, iss. July 25, 1989).
Claims 120 and 121 are rejected under§ 103(a) as unpatentable over
French and Boncodin (US 7,493,974 Bl, iss. Feb. 24, 2009).
Claim 127 is rejected under§ 103(a) as unpatentable over French and
John (US 2008/0300660 Al, pub. Dec. 4, 2008).
1 The Examiner refers to this reference as "Weill." See Final Act. 16.
2
Appeal2014-008527
Application 12/462,203
Lack of Enablement
ANALYSIS
The Examiner found that the claimed thermoelectric system "is
essentially a black box with no description of the internals" (Ans. 3) and
[t]he disclosure is thus insufficient in failing to set forth in an
adequate and sufficient fashion, a description of the internals of
the system which would enable the device to perform all of the
features (i.e., converting energy, supplying energy, driving a
pump, etc.) that are disclosed and claimed. If applicant is of the
opinion that there is a description in the prior art (in the form of
literature, etc. having a date prior to the filing date of this
application), of the internals of the system that can accomplish
the disclosed and claimed features (i.e., converting energy,
supplying energy, driving a pump, etc.), copies of said
literature, etc., must be submitted for appropriate review by the
Office.
Final Act. 9. The Examiner stated that undue experimentation would be
required to make or use the invention given this lack of direction. Ans. 4.
Appellants argue that the Examiner is required to analyze the vVands
factors in determining whether undue experimentation is required, and the
Examiner's analysis fails to analyze a single Wands factor and thus does not
establish undue experimentation. See Appeal Br. 11-17; Reply Br. 4--5.
Appellants also argue that the Examiner requires the application to set forth
a description of the internals of the system that perform all of the claimed
features but the enablement requirement only requires a disclosure that
enables a skilled artisan to make and use the invention. Appeal Br. 17-18.
Appellants further argue that the Examiner ignored prior art such as French,
which must provide an enabling disclosure to be applied as a reference, and
indicates the level of knowledge of a skilled artisan. Reply Br. 6.
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Appeal2014-008527
Application 12/462,203
"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). The Examiner's
failure to analyze any Wands factors undermines the Examiner's statement
that undue experimentation is required to practice the claimed invention.
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Appeal2014-008527
Application I2/462,203
Indefiniteness
The Examiner found that the "means for" limitations recited in all of
the claims are not disclosed implicitly or inherently in the Specification and
only examples of the structures that could be used are disclosed so that the
metes and bounds of those claims cannot be determined. Final Act. 9-IO.
The Examiner also found that the theoretical examples of structures do not
disclose what corresponding structures are encompassed. 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. 25. We agree.
A skilled artisan would understand that the corresponding structure
for the claimed "means for ... thermoelectrically converting heat generated
with a nuclear reactor to electrical energy" is disclosed in the Specification
as thermoelectric devices I 04 that comprise a junction of two materials with
different Seebeck coefficients and various materials that convert the heat
produced by nuclear reactor I02 to electrical energy. See Spec. i-fi-18, I6-23,
Figs. IA, IB, ID-IF. The Examiner has not explained why the disclosed
structures and materials are not adequate corresponding structure. The
Examiner's finding that other "means for" functions are not disclosed in the
Specification does not explain why a particular limitation lacks a disclosure
of corresponding structure, particularly when the Examiner acknowledges
that examples of structures are provided for some "means for" limitations.
Final Act. 9-I0.2 Thus, we do not sustain this rejection.
2 Appellants disclose that electrical energy from thermoelectric device I 04 is
supplied to mechanical pump I 06 by electrical output I 08, but do not appear
to disclose structure for that function. Id. i-fi-18, 26, 3 I--40, Figs. IB, IC, I G.
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Appeal2014-008527
Application 12/462,203
Anticipation by French
The Examiner found that French's thermoelectric electromagnetic
pump ("TEMP") discloses all the elements of claim 64. Final Act. 12 (citing
French, 1: 18-27). The Examiner found that the TEMP converts heat from
the reactor to electrical energy and supplies that energy to the TEMP pump.
Ans. 5---6. The Examiner reasoned that claim 64 merely requires electrical
energy to be supplied to a mechanical pump, and the TEMP "mechanically
pumps coolant to the jet pump using electrical energy." Id. at 6.
Appellants argue that neither the TEMP nor the jet pump is equivalent
to a mechanical pump. Appeal Br. 47; Reply Br. 21-22. Appellants argue
that French does not use thermoelectric electrical energy from the TEMP to
power a mechanical pump. Reply Br. 22. Appellants assert that the TEMP
reinjects a secondary stream of metal coolant into a jet pump as a drive fluid
to induce circulation of the main fluid. Appeal Br. 4 7, 49. Appellants assert
that the TEMP is an integrated unit and the thermoelectric elements supply
electric power to the EM pump elements of the same TEMP, rather than
transferring electrical energy to a mechanical pump of the reactor. Id. at 48.
The Examiner's interpretation of "mechanical pump" to include the
TEMP of French is unreasonable. French discloses that TEMP 22 uses
electrical energy from thermoelectric elements to generate a magnetic field
to move electrically-conductive metal coolant 28. French, 3 :20-25. Thus,
TEMP 22 supplies electrical energy from its thermoelectric elements to its
electromagnetic pump to move metal coolant 28 using a magnetic field,
rather supplying electrical energy to a mechanical pump that moves fluids
using mechanical elements. Nor does French provide electrical energy to
the jet pump, which cannot be considered a mechanical pump in any case.
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Appeal2014-008527
Application 12/462,203
Thus, we do not sustain the rejection of claim 64 or its dependent
claims 67-70, 74, 77, 79-81, 85, 93, 99-101, 114--116, and 123.
Obviousness over French and Weill/Hampel/Boncodin/John
The Examiner rejected claims 104, 110, 120, 121, and 127 as being
unpatentable over French and Klein, Hampel, Boncodin, or John. Final
Act. 16-18. Appellants argue that the Examiner's reliance on Klein,
Hampel, Boncodin, and John to teach features of the dependent claims does
not cure the deficiencies of French upon which the Examiner relies to
disclose the features of claim 64 from which claims 104, 110, 120, 121,
and 127 depend. See Appeal Br. 56-62. We agree. Thus, we do not sustain
the rejections of claims 104, 110, 120, 121, and 127.
DECISION
We REVERSE the rejections of claims 64, 67-70, 74, 77, 79-81, 85,
93, 99-101, 104, 110, 114--116, 120, 121, 123, and 127.
REVERSED
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