Ex Parte Morris

Patent Trial and Appeal Board

Mar 29, 2018

13280478 (P.T.A.B. Mar. 29, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
13/280,478 10/25/2011
26353 7590 04/02/2018
WESTINGHOUSE ELECTRIC COMPANY, LLC
1000 Westinghouse Drive
Suite 141
Cranberry Township, PA 16066
Richard Morris
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.
NSD 2010-031 8574
EXAMINER
O'CONNOR, MARSHALL P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
04/02/2018 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):
guerral@westinghouse.com
spadacjc@westinghouse.com
coldrerj@westinghouse.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte RICHARD MORRIS
Appeal2017-003728
Application 13/280,478 1
Technology Center 3600
Before EDWARD A. BROWN, BRANDON J. WARNER, and
FREDERICK C. LANEY, Administrative Patent Judges.
BROWN, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Richard Morris (Appellant) appeals under 35 U.S.C. § 134(a) from the
Examiner's decision, as set forth in the Final Office Action dated October
16, 2015 ("Final Act."), rejecting claims 1-3, 7, and 8. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 Appellant identifies Westinghouse Electric Company LLC, as the real
party in interest. Appeal Br. 2.
2 Claims 4---6 and 9 are withdrawn from consideration. Appeal Br. 2.
Appeal2017-003728
Application 13/280,478
CLAIMED SUBJECT MATTER
Appellant's disclosure "relates in general to nuclear reactor control
systems and, in particular, to systems for controlling the movement of
nuclear control rods into and out of the core of a nuclear reactor." Spec. i-f 2.
Claim 1, reproduced below, is representative of the claimed subject
matter.
1. A nuclear reactor having a plurality of control rods that are
driven into and out of a nuclear core by a magnetic jack
mechanism, the nuclear reactor comprising:
a drive rod connected to at least some of the control rods
and moveably supported outside of the nuclear core along an
axial drive path that aligns the control rods with which it is
connected with guide thimbles in a fuel assembly within the
nuclear core;
a housing extending from the nuclear reactor in the axial
direction and enclosing at least a portion of the drive path;
a plurality of electric wire coils positioned around the
housing for energizing the magnetic jack mechanism; and
a high temperature inorganic insulation positioned around
and between the electric wire coils that is capable of
withstanding, without substantial degradation, an operating
temperature of the nuclear reactor without an active external
cooling mechanism.
Appeal Br. 8 (Claims App.).
REJECTIONS
1. Claims 1-3, 7, and 8 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement.
2. Claims 1-3, 7, and 8 are rejected under 35 U.S.C. § 103(a), as
unpatentable over DeWesse (US 3,992,255, issued Nov. 16, 1976) in view
of Applicant's Admitted Prior Art ("AAPA") and Kawamura (US 5,233,248,
issued Aug. 3, 1993).
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ANALYSIS
Rejection 1
Claim 1 recites "a high temperature inorganic insulation positioned
around and between the electric wire coils that is capable of withstanding,
without substantial degradation, an operating temperature of the nuclear
reactor without an active external cooling mechanism." Appeal Br. 8
(Claims App. (emphasis added)) (hereinafter also referred to as the
"insulation limitation"). The Examiner finds that "the specification does not
disclose an apparatus that operates without an active external cooling
mechanism." Final Act. 4 (emphasis added).
Appellant contends that the Specification discloses the insulation
limitation recited in claim 1. In support, Appellant quotes the following
description in the Specification:
Whatever mechanical arrangement is employed for the
grippers and lifting coil/ armature arrangement, the existing
control rod drive mechanisms used in the pressurized water
reactor fleet require generous amounts of forced cooling air
provided by large fans installed on or in close proximity of the
reactor vessel closure head. This need for cooling is driven by
the thermally limited design of the CRDM coil assemblies which
provide the electrically driven magnetic field which operate the
grippers to position the control drive rods. Typically, two to three
expensive large volume cooling fans are required to provide the
required forced cooling air, that need maintenance and
replacement periodically. Additionally, this cooling structure
adds to the cost of removing the reactor head during outages.
Elimination of the need for this cooling will not only reduce
equipment and maintenance costs, but may well increase the
thermal efficiency for the existing closure head area insulation.
Appeal Br. 3--4 (quoting Spec. i-f 10 (emphases added)). Appellant points
out that the Specification then states, "[a]ccordingly, it is an object of the
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Application 13/280,478
embodiments described hereafter to provide a new coil arrangement that will
eliminate or reduce the need for such cooling." Id. at 4 (quoting Spec. i-f 11
(emphasis added)). As further noted by Appellant, the Specification
describes that this objective is achieved by a nuclear reactor including:
A plurality of electric coils ... positioned around the housing for
energizing the magnetic jack mechanism with the surface of the
coils covered by a high temperature insulation, such as a ceramic
or quartz material, capable of functioning as an effective
electrical insulation in a reactor temperature environment
without external cooling.
Id. (quoting Spec. i-f 12 (emphasis added)). Appellant also points out that the
Specification describes, the "'inventions claimed hereafter replace the
existing CRDM coil assemblies with a more robust designed coil assembly
that is thermally insensitive to the traditional reactor head area temperatures
of approximately 570°F (approximately 300°C) while maintaining the same
functionality."' Id. (quoting Spec. i-f 24).
In response, the Examiner states that the portions of the Specification
cited by Appellant indicate that "an objective of the apparatus is to eliminate
or reduce the need for a specific cooling arrangement [fans] and does not
call for the elimination of any and all external cooling mechanisms.
Therefore[,] the claims are ... [broader] than the originally disclosed
invention and the rejection is maintained." Ans. 2-3; 3 see Appeal Br. 3--4.
Appellant's contentions are persuasive. The test for sufficiency under
the written description requirement of 35 U.S.C. § 112, first paragraph, "is
whether the disclosure of the application relied upon reasonably conveys to
those skilled in the art that the inventor had possession of the claimed
3 Herein, we refer to the second Examiner's Answer dated November 8,
2016, as the "Ans."
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Application 13/280,478
subject matter as of the filing date." See Ariad Pharms., Inc. v. Eli Lilly &
Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en bane). To have "possession,"
"the specification must ... show that the inventor actually invented the
invention claimed." Id.
It is unclear what particular "apparatus" "that operates without an ...
external cooling mechanism" the Examiner is referring to. Final Act. 4;
Ans. 2-3. We construe the insulation limitation to mean that "without an
active external cooling mechanism" refers to the "high temperature
inorganic insulation," which is what is "capable of withstanding ... an
operating temperature of the nuclear reactor" "without an active external
cooling mechanism." To the extent the Examiner is construing claim 1 as
requiring that the nuclear reactor "operates without an active external
cooling mechanism," that construction is inconsistent with both the claim
language and the Specification, and thus, is unreasonable. "[T]he PTO must
give claims their broadest reasonable construction consistent with the
specification." In re ICON Health & Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007). Further, we construe "an active external cooling
mechanism" in the insulation limitation as a cooling mechanism that is
external to the electric wire coils and provides active cooling of the electric
wire coils. We understand that the cooling fans described in the
Specification are an active external cooling mechanism.
We agree with Appellant that the description set forth in paragraphs
10-12 and 24 of the Specification would reasonably convey to those of
ordinary skill in the art that Appellant had possession of the subject matter
recited in claim 1, including the insulation limitation, as of the filing date.
See Ariad, 598 F.3d at 1351. Accordingly, we do not sustain the rejection of
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claims 1-3, 7, and 8 under 35 U.S.C. § 112, first paragraph, as failing to
comply with the written description requirement.
Rejection 2
For claim 1, the Examiner finds that De Wesse discloses a nuclear
reactor comprising a plurality of electric wire coils (magnet coils 21, 31, 41)
for energizing a magnetic jack mechanism. Final Act. 5---6 (citing De Wesse,
col. 3, 11. 47--48, col. 4, 11. 53-55, col. 5, 11. 8-15, 43--45, Fig. 1). The
Examiner finds that De W esse does not disclose the claimed insulation
limitation. Id. at 7.
The Examiner finds that Kawamura relates to heat resistant permanent
magnetic motors for actuating a control rod in a pressure container of a
nuclear reactor, and discloses the claimed insulation limitation. Final Act.
7-8. Particularly, the Examiner finds that Kawamura discloses inorganic
high temperature insulation positioned around and between electric wire
coils ("armature coil 3 processed by coating it with mineral insulation
material having stable insulation characteristics in high temperature
environments"). Id. at 8 (citing Kawamura, col. 4, 11. 61---63, Fig. 1). The
Examiner also finds that the inorganic high temperature insulation is capable
of withstanding, without substantial degradation, an operating temperature
of the nuclear reactor ("long-lasting stable insulation performance in high
temperature environments of the nuclear reactor") (id. (citing Kawamura,
col. 2, 11. 5-12, col. 6, 11. 3-13)) without an active external cooling
mechanism (id. (citing Kawamura, col. 8, 11. 1-15)).
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to modify the nuclear reactor of De W esse to include
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Application 13/280,478
the insulation limitation, as taught by Kawamura, "to avoid installing the
control rod actuating apparatus outside of the pressure container." Id. (citing
Kawamura, col. 8, 11. 6-10).
Appellant acknowledges that Kawamura discloses an armature coil
made by winding a wire covered with a mineral insulation material (Appeal
Br. 5), and also that the permanent magnetic synchronous motor is capable
of high temperature operation (id. at 6 (quoting Kawamura, col. 1, 11. 24--
32) ). But, Appellant contends:
Kawamura et al. further evidences, in the above quote, that
transitioning from one conventional application to another motor
design requires an inventive step. It has been over eighteen years
since Kawamura et al. was published and the subject Morris
application was filed, if it was obvious to incorporate such an
insulation arrangement, as described in Kawamura et al., in a
magnetic jack control rod drive system, then the Examiner
should have been able to uncover some reference that showed
the same, since it would save a significant amount of time in
disassembling the reactor vessel for refueling as well as save the
cost of purchasing, installing and servicing the air blowers which
are currently used to actively cool the magnetic jack coils.
Id. (emphasis added).
Appellant also contends:
the enlarged heat sink of the permanent magnetic synchronous
motor of Kawamura et al. creates an entirely different
environment surrounding the coils than is found in the coils of a
magnetic jack system. Additionally, the motor of Kawamura et
al. is designed to be submerged in the reactor coolant which is
circulated through the pressure vessel (col. 2, lines 6-12), so it
does not operate without active external cooling, since the
circulating coolant draws off some of the heat.
Id. (emphasis added).
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Appellant's contentions are not persuasive. Firstly, claim 1
recites "a high temperature inorganic insulation ... that is capable of
withstanding, without substantial degradation, an operating
temperature of the nuclear reactor without an active external cooling
mechanism" (emphasis added). Claim 1 does not positively recite that
the high temperature inorganic insulation is not cooled by "an active
external cooling mechanism" (emphasis added), such as control rod
drive mechanism coil cooling fans. Accordingly, to the extent
Appellant's argument is premised on claim 1 requiring that the high
temperature inorganic insulation is not cooled by "an active external
cooling mechanism," this argument is not commensurate with the
scope of claim 1. Limitations that do not appear in the claims cannot
be relied upon for patentability. In re Self, 671 F.2d 1344, 1348
(CCPA 1982).
Secondly, to the extent Appellant is contending that the length of time
between the publication (issue) date of Kawamura and the filing date of the
present application, coupled with Appellant's contention that the Examiner
did not uncover a single prior art reference that discloses an insulation
arrangement, as described in Kawamura, provided in a magnetic jack control
rod drive system, proves that the claimed nuclear reactor is unobvious, we
disagree. We note that a mere time span, by itself, is insufficient to establish
either a long-felt need or the failure of others to satisfy a long-felt need. See
Iron Grip Barbell Co., Inc. v. USA Sports, Inc., 392F.3d1317, 1325 (Fed.
Cir. 2004) ("Absent a showing of long-felt need or the failure of others, the
mere passage of time without the claimed invention is not evidence of
nonobviousness").
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Thirdly, Kawamura evidences that motors used in nuclear reactors to
actuate control rods are exposed to severe conditions that include high
temperatures. See, e.g., Kawamura, col. 1, 11. 8-15, col. 2, 11. 5-12. To
withstand such high temperature conditions, Kawamura teaches coating the
armature coil with a mineral insulation material having stable heat insulating
performance in such environments. See id. at col. 4, 11. 61---63. In view of
these teachings, the Examiner has provided an adequate reason with a
rational underpinning to modify De W esse' s magnet coils to include high
temperature inorganic insulation. Final Act. 7.
Even if Kawamura does not explicitly describe that the mineral
insulation material allows the associated motor to withstand the high
operating temperatures without external cooling fans, the Examiner is not
required to look only to the problem Appellant contends it addressed:
The first error of the Court of Appeals in this case was to
foreclose this reasoning by holding that courts and patent
examiners should look only to the problem the patentee was
trying to solve .... The Court of Appeals failed to recognize that
the problem motivating the patentee may be only one of many
addressed by the patent's subject matter. The question is not
whether the combination was obvious to the patentee but whether
the combination was obvious to a person with ordinary skill in
the art. Under the correct analysis, any need or problem known
in the field of endeavor at the time of invention and addressed by
the patent can provide a reason for combining the elements in
the manner claimed.
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398, 420 (2007) (emphasis added).
Accordingly, Appellant has not apprised us of error in the Examiner's
rationale for combining the teachings of Kawamura with De Wesse.
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According to Appellant:
Since at least prior to the early 1970's nuclear utilities have been
trying to reduce their outage times because of the high cost of
purchasing replacement power during the outages. The time it
takes to remove and reinstall the head of the reactor vessel is a
significant contributor to the outage time, and disconnection,
removal, reinstallation and reconnection of the control rod drive
mechanism coil cooling fans, so the head can be removed, is a
time consuming part of that process.
Appeal Br. 6-7 (emphasis added).
To the extent Appellant is contending that the claimed subject matter
satisfies a long-felt need, we are not persuaded that Appellant has made this
showing. Establishing long-felt need requires objective evidence that a
recognized problem existed in the art for a long period of time without
solution. See Vandenberg v. Dairy Equip. Co., 740 F.2d 1560, 1567 (Fed.
Cir. 1984 ). Once a long-felt need has been established, it must further be
shown that the claimed invention satisfied the need. See In re Cavanagh,
436 F.2d 491, 496 (CCPA 1971). We note that "long-felt need is analyzed
as of the date of an articulated identified problem and evidence of efforts to
solve that problem." Texas Instr. Inc. v. Int 'l Trade Comm 'n, 988 F.2d
1165, 1178 (Fed. Cir. 1993).
Appellant has not produced sufficient factual evidence to establish a
long-felt need or the failure of others to satisfy a long-felt need. Appellant's
statement that "Since at least prior to the early 197 0 's nuclear utilities have
been trying to reduce their outage times because of the high cost of
purchasing replacement power during the outages," is an attorney allegation
without persuasive supporting evidence. Appeal Br. 6; see In re De Blauwe,
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736 F.2d 699, 705 (Fed. Cir. 1984) (Arguments and conclusions
unsupported by factual evidence carry no evidentiary weight).
Appellant also has not explained adequately how either Baliga4 or
Altman, 5 which Appellant contends teach transitioning to integral head
packages as "one such example of a step taken to reduce the outage time,"
provides evidence of a long-felt need or failure of others. Appeal Br. 7. For
example, Appellant does not show that the prior art attempt of Baliga or
Altman failed because its apparatus lacked the claimed features, that is, a
link between Baliga or Altman and the claimed features. See Ormco Corp.
v. Align Tech., Inc., 463 F.3d 1299, 1313 (Fed. Cir. 2006) (Although Align
Tech. submitted evidence that, prior to the introduction of its orthodontic
products, others had tried and failed to develop a functional, invisible
orthodontic system, the court determined that "the evidence does not suggest
that these prior attempts failed because the devices lacked the claimed
features").
Appellant also contends that "[t]he Examiner has produced no
evidence that anyone has considered removing the need for the control rod
drive mechanism coil cooling fans from the date that Kawamura et al. was
filed to the filing date of the subject Morris application." Appeal Br. 7
(emphasis added). To the extent Appellant is contending that the Examiner
has the burden to present evidence to show either the existence of "the need
for the control rod drive mechanism coil cooling fans," or that others have
tried and failed to satisfy ("remove") this particular need, we disagree. It is
well-established that once an Examiner establishes aprimafacie case of
4 US 6,546,066 B2, issued Apr. 8, 2003.
5 US 4,830,814, issued May 16, 1989.
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obviousness, the burden of going forward shifts to Appellant. See In re
Dillon, 919 F.2d 688, 692 (Fed. Cir. 1990). Accordingly, after the Examiner
articulated a reasoned basis for the conclusion of obviousness, it became
Appellant's burden to produce evidence in support of an assertion of long-
felt need or failure of others.
Appellant further contends that it "has shown that others have
attempted to come up with a solution to reducing outage time and no one has
come up with a solution that eliminates the need for the control rod drive
mechanism coil cooling fans." Appeal Br. 7. We are not persuaded that
Appellant has made this showing, as Appellant has not provided sufficient
factual evidence to establish a long-felt need, or the failure of others to
provide a solution to this need.
For the foregoing reasons, we sustain the rejection of claims 1, and of
claims 2, 3, 7, and 8 depending therefrom, as unpatentable over DeWesse,
AAP A, and Kawamura.
DECISION
We reverse the rejection of claims 1-3, 7, and 8 under 35 U.S.C.
§ 112, first paragraph.
We affirm the rejection of claims 1-3, 7, and 8 under 35 U.S.C.
§ 103(a) as unpatentable over DeWesse, AAPA, and Kawamura.
No time period for taking any subsequent action in connection with
this appeal may be extended according to 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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