Ex Parte Rickard et al

Patent Trial and Appeal Board

Mar 31, 2017

12547282 (P.T.A.B. Mar. 31, 2017)

United States Patent and Trademark Office
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
12/547,282 08/25/2009 David Allan RICKARD 24IG235311 (8564-000183) 4983
33727 7590 04/04/2017
HARNESS, DICKEY & PIERCE, P.L.C.
P.O. BOX 8910
RESTON, VA 20195
EXAMINER
BURKE, SEAN P
ART UNIT PAPER NUMBER
3646
NOTIFICATION DATE DELIVERY MODE
04/04/2017 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):
dcmailroom@hdp.com
pshaddin@hdp.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID ALLAN RICKARD, BRADLEY BLOOMQUIST,
MELISSA ALLEN, NICHOLAS R. GILMAN,
JENNIFER M. BOWIE, and WILLIAM EARL RUSSELL II
Appeal 2014-006306
Application 12/547,282
Technology Center 3600
Before JENNIFER D. BAHR, BRANDON J. WARNER, and
LEE L. STEPINA, Administrative Patent Judges.
WARNER, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
David Allan Rickard et al. (“Appellants”)1 appeal under 35 U.S.C.
§ 134(a) from the Examiner’s decision rejecting claims 17—24, which are all
the pending claims. Appeal Br. 1. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to Appellants, the real party in interest is General Electric
Company. Appeal Br. 1.
Appeal 2014-006306
Application 12/547,282
CLAIMED SUBJECT MATTER
Appellants’ disclosed invention relates to “isotopes and apparatuses
and methods for production thereof in nuclear reactors.” Spec. 11.
Claim 17, reproduced below with emphasis added, is the sole independent
claim appealed and is representative of the subject matter on appeal.
17. A method of producing isotopes in a nuclear reactor with
an irradiation target delivery system, the method comprising:
placing at least one irradiation target into an irradiation
target delivery device, the irradiation target configured to
substantially convert to a different daughter product when
exposed to a neutron flux in the operating nuclear reactor, the
irradiation target including a first irradiation target positioned at
a leading end of a target portion of the irradiation target
delivery device, the first irradiation target having an end that
tapers to the leading edge;
inserting the irradiation target delivery device into an
instrumentation tube of a nuclear reactor via a drive system that
drives the irradiation target delivery device into the
instrumentation tube;
irradiating the at least one irradiation target;
removing the irradiation target delivery device from the
nuclear reactor; and
harvesting the daughter product from the irradiation
target.
EVIDENCE
The Examiner relies on the following evidence in rejecting the claims
appeal:
Blatter US 3,773,615 Nov. 20, 1973
Kang US 2003/0227991 A1 Dec. 11,2003
Kang (“Kang II”) US 2005/0286675 A1 Dec. 29, 2005
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Application 12/547,282
REJECTIONS
The following rejections are before us for review:
I. Claims 17, 19, and 20 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kang and Blatter. Final Act. 2—\.
II. Claims 18 and 21—24 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Kang, Blatter, and Kang II. Id.
at 4—6.
ANALYSIS
Independent claim 17 recites, in relevant part, a method of producing
isotopes that includes “placing at least one irradiation target into an
irradiation target delivery device,” and “inserting the irradiation target
delivery device into an instrumentation tube of a nuclear reactor via a drive
system that drives the irradiation target delivery device into the
instrumentation tuber See Appeal Br., Claims App. (emphasis added).
Thus, the claimed method requires that the irradiation target be inserted into
an instrumentation tube by driving (pushing something using a lot of force;
forcing something)2 via a drive system. Appellants argue that Blatter, as
relied on in the rejection, does not teach such a driving step as required. See
Appeal Br. 8—9; Reply Br. 2—5. We agree.
2 We note that Appellants’ proffered definitions of “drive,” each relate
to “powering an object in a direction of motion.” Reply Br. 2—3. These
definitions accord with an ordinary meaning of the claim term as “to push
something using a lot of force,” or “to force something,” which is consistent
with the claim language and Appellants’ Specification. See Merriam-
Webster’s Collegiate Dictionary (11th ed. 2003).
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Application 12/547,282
We have reviewed the Examiner’s rejection of claim 17 based on a
combination of teachings from Kang and Blatter (see Final Act. 2—3;
Ans. 6—7) in light of Appellants’ arguments (see Appeal Br. 8—9; Reply
Br. 2—5). In short, the dispositive issue raised in this appeal is whether the
citations to Blatter, as relied on in the rejection, sufficiently teach the
disputed limitation of inserting a target delivery device into a tube via a
drive system that drives the delivery device into the tube. For the reasons
explained in Appellants’ briefing, we agree that the Examiner has not
sufficiently identified credible evidence that Blatter teaches the required
action of such a drive system.
More specifically, in rejecting claim 17, the Examiner acknowledges
that Kang “does not disclose the use of a drive system for inserting or
removing the target,” and relies on Blatter for teaching “a drive system for
inserting and removing a target.” Final Act. 3 (citing Blatter, col. 4,
11. 40-55). As Appellants correctly observe, however, the cited portion of
Blatter relied on discusses longitudinal force or movement to cause
specimens 20 within capsule assembly 10 to alternately shift for locking or
wedging, but not to drive specimens 20 into an instrumentation tube of a
nuclear reactor, as the method claim requires (Blatter’s longitudinal force or
movement is applied after capsule assembly 10 is already disposed within its
holder in the reactor). See Appeal Br. 8—9 (citing Blatter, col. 4,11. 40-59;
col. 5,1. 40-col. 6,1. 7).
In the Answer, the Examiner appears to improperly focus on structural
capabilities alone, explaining that a “drive system,” as recited in claim 17 “is
construed to mean a system capable of inserting the target delivery device
into the instrumentation tube,” and that, because “[n]o mention is made, for
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Appeal 2014-006306
Application 12/547,282
example of an electric motor or mechanical gearbox or any other machine
normally associated with drive systems[,] ... the claim is interpreted to read
on any system capable of inserting the target delivery device into the
instrumentation tube.” Ans. 6—7. This interpretation of the claim is in error,
as the method of claim 17 requires—not just a drive system capable of
inserting the target delivery device into an instrumentation tube—but
actively “inserting” the target delivery device into an instrumentation tube of
a nuclear reactor with a drive system that “drives” the device into the tube.
See Appeal Br., Claims App. Regardless of what may power the drive
system (the Examiner is correct that claim 17 does not specify this), actively
inserting by driving is nevertheless required.
We agree with Appellants that the recited “inserting” step, with such
insertion being performed by “a drive system that drives the irradiation
target deliver device into the instrumentation tube,” is not disclosed in the
cited portion of Blatter. See Appeal Br. 8—9; Reply Br. 2—5. In other words,
the Examiner’s finding that Blatter teaches a drive system for inserting and
removing a target is not supported by a preponderance of the evidence.
Thus, the Examiner has not sufficiently established that the cited
references, particularly Blatter as relied upon, discloses the disputed
limitation as claimed.3 This unsupported finding from Blatter pervades
3 We note that Appellants’ Specification appears to show a drive system
in a figure labeled “Conventional Art,” but also that it is somewhat unclear
whether drive system 3300 depicted in Figure 5 is itself conventional, or is
simply being used with “a conventional Transverse In-core Probe (TIP)
system.” Spec. 139; Fig. 5. Regardless, it is clear that the Examiner relied
on Blatter for teaching “a drive system for inserting and removing a target,”
as discussed supra. Final Act. 3. As the Patent Trial and Appeal Board is a
review body, rather than a place of initial examination, we therefore decline
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Application 12/547,282
Rejections I and II. See Final Act. 2—6. We note that Kang II was relied on
by the Examiner for teaching additional features, but not to cure the above-
noted deficiency with respect to Blatter. See id. at 4. The lack of specific
evidentiary support from Blatter is fatal to Rejections I and II.
Accordingly, based on the record before us, the Examiner has not met
the burden of establishing a proper case that the claims are unpatentable
based on the cited references. On this basis, we do not sustain the rejections
of claims 17—24.
DECISION
We REVERSE the Examiner’s rejections of claims 17—24.
REVERSED
to make a determination of how one of ordinary skill in the art may
understand drive system 3300; rather, we leave it to the Examiner to
determine the appropriateness of any further course of action based on such
a disclosure should there be further prosecution of this application. See Ex
Parte Frye, 94 USPQ2d 1072, 1075-77 (BPAI 2010) (precedential).
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