12565414 (P.T.A.B. Aug. 18, 2016)

Ex Parte McWhirter et al

Patent Trial and Appeal BoardAug 18, 2016

12565414 (P.T.A.B. Aug. 18, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE APPLICATION NO. FILING DATE 12/565,414 0912312009 92446 7590 08/22/2016 TerraPower Wolf, Greenfield & Sacks, P.C. 600 Atlantic A venue Boston, MA 02210-2206 FIRST NAMED INVENTOR Jon D. McWhirter 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. T2091.70002US00/012-000 1415 EXAMINER O'CONNOR, MARSHALL P ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 08/22/2016 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): Patents_eOfficeAction@WolfGreenfield.com T209 l_eOfficeAction@WolfGreenfield.com docketing@terrapower.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte JON D. MCWHIRTER, THOMAS ALLAN WEA VER, CHARLES WHITMER, LOWELL L. WOOD, JR., and GEORGE B. ZIMMERMAN Appeal2014-002863 1 Application 12/565,414 Technology Center 3600 Before: CHARLES N. GREENHUT, JILL D. HILL, and ERIC C. JESCHKE, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Appellants appeal under 35 U.S.C. Â§ 134 from a rejection of claims 1- 3, 5, 7, 8, 41, 50-52, and 65---69.2 We have jurisdiction under 35 U.S.C. Â§ 6(b ). We reverse. 1 According to Appellants, Searete LLC, is the real party in interest. 2 The Claims Appendix to the Appeal Brief is not entirely consistent with the Examiner's indication of the status of the claims. Appellants do not present any comments regarding the claim status indicated by the Examiner. We consider the status of the claims to be as stated by the Examiner in the Final Action. Appeal2014-002863 Application 12/565,414 CLAIMED SUBJECT MATTER The claims are directed to a method for adjusting quantities of materials. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A method for adjusting quantities of materials in a first cell, compnsmg: (a) determining an average rate of change of amount of a material in said first cell based on a previous amount of said material in said first cell and a flux in said first cell; (b) determining an updated amount of said material in said first cell based on said average rate of change; and ( c) adjusting said updated amount of said material in said first cell by a quantity. REFERENCES The prior art relied upon by the Examiner in rejecting the claims on appeal is: Hirukawa et al. ("Hirukawa") Hyde et al. ("Hyde") US 2001/0026603 Al Oct. 4, 2001 US 2008/0123796 Al May 29, 2008 REJECTIONS Claims 1-3, 5, 7, 8, 41, 50-52, and 65---69 are rejected under 35 U.S.C. 112, second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which applicant regards as the invention. Final Act. 4. Claims 1, 3, 5, 7, 8, 41, 45, 50-52, and 65-69 are rejected under 35 U.S.C. Â§ 102(b) as being anticipated by Hyde. Id. 2 Appeal2014-002863 Application 12/565,414 Claim 2 is rejected under 35 U.S.C. Â§ 103(a) as being unpatentable over Hyde and Hirukawa. Id. at 7. OPINION Regarding theÂ§ 112, second paragraph, rejection, Appellants correctly point out that the Examiner conflates the requirements of the first and second paragraphs of 35 U.S.C. Â§ 112. App. Br. 4---6. The distinction between the first and second paragraphs of 35 U.S.C. Â§ 112 is discussed in MPEP Â§ 217 4, and that discussion need not be reproduced here. This does not appear to be a mere typographical error as, if it was, the Examiner had ample opportunity to correct it. The Examiner has not set forth any basis for demonstrating the claims lack clarity, are indefinite, or do not claim the subject matter which applicant regards as the invention under 35 U.S.C. Â§ 112, second paragraph. Appellants correctly note that the Examiner also does not appear to have considered the requirements for an enablement rejection. App. Br. 7. However, a rejection under 35 U.S.C. Â§ 112, first paragraph, has not been set forth for our review by the Examiner. Accordingly, the rejection under 35 U.S.C. Â§ 112, second paragraph, cannot be sustained. Turning to the prior-art rejections, "the precise language of 35 U.S.C. Â§ 102 that ' (a) person shall be entitled to a patent unless,' concerning novelty and unobviousness, clearly places a burden of proof on the Patent Office which requires it to produce the factual basis for its rejection of an application under sections 102 and 103." In re Warner, 379 F.2d 1011, 1016 (CCP A 1967). The Patent Trial and Appeal Board is primarily a tribunal of review. See Ex Parte Frye, 94 USPQ2d 1072, 1075-77 (BPAI 2010) 3 Appeal2014-002863 Application 12/565,414 (precedential). For that review to be meaningful, a rejection must be based on some concrete evidence in the record to support the Examiner's factual findings and legal conclusions. In re Zurko, 258 F.3d 1379, 1386 (Fed. Cir. 2001 ). A rejection must be set forth in a sufficiently articulate and informative manner to meet the notice requirement of 35 U.S.C. Â§ 132, such as by identifying where or how each limitation of the rejected claims is met by the prior art references. In re Jung, 637 F.3d 1356, 1363 (Fed. Cir. 2011); see also 37 C.F.R. Â§ 1.104(c)(2) ("When a reference is complex or shows or describes inventions other than that claimed by the applicant, the particular part relied on must be designated as nearly as practicable. The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified."); see also Gechter v. Davidson, 116 F.3d 1454, 1460 (Fed. Cir. 1997) (PTO must create a record that includes "specific fact findings for each contested limitation and satisfactory explanations for such findings."). We have carefully reviewed the record, with particular attention to the portions of Hyde relied on by the Examiner as supposedly disclosing steps or acts meeting the limitations of independent claim 1. See Final Act. 4--6 (citing Hyde reference numerals 520, 530, 540, and Figure 5, in this order, paras. 70, 79, 103, 106-112, 96, 119, and 37). Like Appellants, we are unable to determine the steps or acts actually relied upon by the Examiner as meeting the limitations of the claimed method. The only explanation provided by the Examiner in the Answer is: The reference numerals and quotations from the prior art used clearly point out the aspects of the prior art the [E]xaminer relied upon to make the rejections. Therefore the rejection is deemed proper by the examiner and is maintained. 4 Appeal2014-002863 Application 12/565,414 Ans. 4. Mere citation to reference numerals, figures, and paragraph numbers does not satisfy the notice requirements ofÂ§ 132 if it is not clear where or how each limitation of the rejected claims is met by the prior art references. In re Jung, supra. As the Examiner acknowledges, 3 7 C.F .R. Â§ 1.104( c )(2) also requires that "[t]he pertinence of each reference, if not apparent, must be clearly explained." See Ans. 4. The Examiner does not identify the actual actions in Hyde purported to satisfy the steps recited in claim 1, and no such actions are apparent to us in the cited portions of Hyde. It is neither our place, nor Appellants' burden, to speculate as to the Examiner's basis for rejecting claims. In re Stepan Co., 660 F.3d 1341, 1345 (Fed. Cir. 2011) (It is the PTO's obligation to provide timely notice to the applicant of all matters of fact and law asserted.) App. Br. 9-10. Accordingly, the Examiner's prior-art rejections cannot be sustained on the record before us. DECISION The Examiner's rejections are reversed. REVERSED 5