Ex Parte Roche et al

Board of Patent Appeals and Interferences

Oct 23, 2009

10502874 (B.P.A.I. Oct. 23, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte CLAUDE ROCHE and FABRICE PAVANELLO
____________________

Appeal 2009-004606
Application 10/502,874
Technology Center 3600
____________________

Decided: October 23, 2009
____________________

Before JAMESON LEE, RICHARD TORCZON, and MICHAEL P.
TIERNEY, Administrative Patent Judges.

TIERNEY, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-004606
Application 10/502,874

2
A. Statement of the Case
This is a decision on appeal by the real party in interest, Compagnie
Generale Des Matieres Nucleaires (Compagnie) under 35 U.S.C. § 134(a)
from a final rejection of claims 2-5, the only claims on appeal. Claim 1 was
cancelled prior to this appeal. Compagnie requests reversal of the
Examiner’s rejection of claims 2-5. We have jurisdiction under 35 U.S.C.
§ 6(b). We affirm.

The Invention
Compagnie’s invention relates to a non-destructive method for
inspecting nuclear fuel rods. (Spec. 1:1-7). Compagnie teaches that its
method is used for inspecting fuel rods that have plugs welded to an outer
cladding that contains a spring. (Id. at 1:1-7 and Fig. 1). Specifically,
Compagnie’s method is designed to determine whether the spring was
damaged by the weld energy used to weld the plug to the cladding.
(Spec. 1:8 to 2:20). Claim 2 is the only independent claim. Claims 3-5
depend directly or indirectly from claim 2.1 Claim 2 is illustrative of the
claimed invention and is reproduced below:
2. A method for the inspection of a nuclear fuel rod, said fuel rod
comprising:
fuel;
a cladding;
an end plug welded to said cladding; and

1 Claims 2-5 were added by Amendment contemporaneously with the
cancellation of independent claim 1. (Amendment 5/26/2006). The
Amendment states that claims 3-5 depend either directly or indirectly from
claim 2. (Id. at 10). Claim 5 is currently drafted as dependent from
cancelled claim 1. We understand this to be a clear typographical error and
treat claim 5 as depending from claim 2.
Appeal 2009-004606
Application 10/502,874

3
a coil spring compressed between said end plug and
said fuel;
said method comprising the steps of:
moving said fuel rod along an electromagnetic induction
detector;
measuring an output signal of said detector during said
moving;
recording a first value (S3) of said output signal at a base
portion of said signal corresponding to a location of a middle
part of said spring;
recording a second value (S4) at a first peak of said
output signal corresponding to a first end of said spring, said
first peak representing a maximum magnetic coupling;
recording a third value (S5) at a second peak of said
output signal corresponding to a second end of said spring, said
second peak representing another maximum magnetic coupling;
and calculating a ratio (S4-S5)/S3 of the values of the signal
and
rejecting or not rejecting said fuel rod depending on
whether said ratio is more than or less than a threshold value.

(App. Br. 36-37, Claims App’x.).

References Relied on by the Examiner
Gradel et al. 4,663,112 May 5, 1987
Skipper et al. 5,448,034 Sep. 5, 1995
O’Neill et al. 2001/0011903 A1 Aug. 9, 2001
Holzl 2002/0074996 A1 Jun. 20, 2002

The Rejections on Appeal
The Examiner provided the following grounds of rejection for the
claims on appeal.
Appeal 2009-004606
Application 10/502,874

4
i. The Examiner rejected claims 2-5 under 35 U.S.C. § 112,
1st paragraph as failing to enable a person of ordinary skill in the art to
make and use the invention.
ii. The Examiner rejected claims 2-5 under 35 U.S.C. § 112,
2nd paragraph, as being indefinite for failing to particularly point out
and distinctly claim the subject matter of the invention.
iii. The Examiner rejected claims 2-5 under 35 U.S.C. § 103(a) as
unpatentable over Gradel, Skipper, and Holzl.

For purposes of this appeal we do not reach the Examiner’s rejection
of claims 2-5 as lacking definiteness, since we affirm the Examiner’s
determination that the claims are unpatentable as lacking enablement.

B. Issues
1. (Enablement) Has Compagnie shown that the Examiner incorrectly
determined that the specification fails to enable one of ordinary skill in the
art to determine the claimed threshold value for rejecting or not rejecting a
fuel rod?
2. (Obviousness) Has Compagnie shown that the Examiner incorrectly
determined that the combination of Gradel, Skipper, and Holzl provides a
reason for one of ordinary skill in the art to take specific measurements at
particular points along a spring and use these specific measurements to
determine whether or not the spring should be accepted or rejected?

Appeal 2009-004606
Application 10/502,874

5
ISSUE 1: ENABLEMENT
C. Findings of Fact
Compagnie’s Specification
1. Compagnie’s specification discloses a method of inspecting a nuclear
fuel rod using an electromagnetic induction detector. (Spec. 1:1-2,
Abstract).
2. Compagnie Figure 1 depicts Compagnie’s fuel rod 1 and detector 9
and is reproduced below:

Compagnie Figure 1, reproduced above, depicts Compagnie’s fuel rod
and detector.
3. Compagnie teaches that some nuclear fuel rods comprise a plug 3 that
is welded 6 to a cladding 1. (Spec. 1:3-5 and 1:26 to 2:3).
4. Compagnie further teaches that the cladding 1 surrounds both stacked
pellets 4 and a spring 5 that is “compressed between the plug and the stack
of pellets to hold the stack in place.” (Id. at 1:5-7).
5. Compagnie teaches that the spring may be damaged if excessive input
Appeal 2009-004606
Application 10/502,874

6
energy is utilized to form the weld 6 between the plug 3 and cladding 1.
(Id. at 1:26 to 2:3).
6. Compagnie states that a nuclear fuel rod must be rejected if the spring
is damaged, because the excess energy could modify the “metallurgical
structure of the spring” and/or deposit molten metal droplets on the spring in
a manner that could affect the spring’s state or make it stick to the plug.
(Id. at 1:26 to 2:5).
7. Compagnie’s specification teaches that the decision of whether to
reject a fuel rod is based upon the comparison of a ratio of recorded values
(“calculated value”) to a threshold value. (Id. at 2:6-20).
8. The specification states the calculated value is determined as follows:
((S4) – (S5))/(S3), where the first peak of the output signal corresponding to
a first end of the spring is represented by (S4), a second peak of the output
signal corresponding to a second end of the spring is represented by (S5),
and the value of an output signal at the base portion of a middle part of the
spring is represented by (S3). (Id. at 3:27 to 4:24 and App. Br. 36-37
“Claims App’x.”).
9. Compagnie’s specification states that the threshold value, which is
compared to the calculated value, “must be determined empirically” to
appraise whether or not the rods comply with manufacturing requirements.
(Spec. 4:15-24).
10. The specification generally refers to an “example considered” but
does not identify with specificity what constitutes the example except to
state that it has a threshold value that “may be -10%.” (Id. at 4:17-24).

Appeal 2009-004606
Application 10/502,874

7
Examiner’s Findings
11. The Examiner found that Compagnie’s specification fails to teach one
of ordinary skill in the art how to determine the claimed threshold value.
(Ans. 5-7).
12. The Examiner found that the art of inspecting a nuclear fuel rod for
spring weld errors is not a predictable art. (Id. at 4-7).
13. The Examiner also found that Compagnie’s specification fails to
provide any parameters with which to determine a threshold. (Id.).
14. The Examiner found that Compagnie’s general recitation of an
“example considered” did not amount to a working example of the claimed
invention. (Id. at 6).
15. The Examiner found that the claims are broad, especially given that
no direction is provided on how one of ordinary skill in the art is to
determine threshold value parameters based upon the geometry or material
properties of the fuel rod. (Id. at 6-7).

D. Principles of Law
To comply with the enablement requirements of 35 U.S.C. §112, first
paragraph, a specification must adequately teach how to make and how to
use a claimed invention throughout its scope, without undue
experimentation. Plant Genetic Systems N.V. v. DeKalb Genetics Corp.,
315 F.3d 1335, 1339 (Fed. Cir. 2003).
There are a variety of factors which may be considered in determining
whether a disclosure would require undue experimentation. These factors
include: (1) the quantity of experimentation necessary, (2) the amount of
direction or guidance presented, (3) the presence or absence of working
Appeal 2009-004606
Application 10/502,874

8
examples, (4) the nature of the invention, (5) the state of the prior art, (6) the
relative skill of those in the art, (7) the predictability or unpredictability of
the art, and (8) the breadth of the claims. In re Wands, 858 F.2d 731, 737
(Fed. Cir. 1988). Not all of these factors need be reviewed to determine
enablement. Amgen, Inc. v. Chugai Pharm. Co., 927 F.2d 1200, 1213 (Fed.
Cir. 1991) (noting that the Wands factors "are illustrative, not mandatory.
What is relevant depends on the facts…").
The Examiner bears the initial burden of setting forth a reasonable
explanation as to why the scope of protection provided by the claims is not
adequately enabled by the description of the invention provided in the
specification. If the Examiner’s burden is met, the burden then shifts to the
applicant to provide proof that the specification is indeed enabling. In re
Wright, 999 F.2d 1557, 1561-62 (Fed. Cir. 1993).

E. Analysis
The Examiner determined that claims 2-5 fail to comply with the
enablement requirement of 35 U.S.C. § 112, 1st paragraph, by failing to
enable a person of ordinary skill in the art to make and use the claimed
invention without undue experimentation. (Ans. 4-7). The Examiner,
relying on an analysis of the Wands factors, concluded that the claimed
threshold value could not be determined without undue experimentation.
(Id.). Specifically, the Examiner found that the art of spring weld inspection
for fuel rods was unpredictable (Wands factor 7). The Examiner also found
that the claimed breadth was broad as the claimed nuclear fuel rods are not
limited to any particular shape, components, types of welds, etc. (Wands
factor 8). The Examiner further found that Compagnie’s specification
Appeal 2009-004606
Application 10/502,874

9
provides little if any guidance with respect to the manner in which the
threshold value is determined and provides no working examples to guide
one of ordinary skill in the art. (Wands factors 2 and 3). Additionally, the
Examiner found that a large quantity of experimentation would be required
in order to determine the claimed threshold value. (Wand factor 1).
Compagnie contends that its specification enables one of ordinary
skill in the art to determine a threshold value without undue
experimentation. (App. Br. 11-19; Reply Br. 4-11). Specifically,
Compagnie cites paragraphs [0011]-[0013]2 of the published specification
and states that “the specification clearly gives examples of how the threshold
might be determined.” (App. Br. at 11 and 15). Appellant further states that
the examples given are “within the abilities of one skilled in the art to
practice.” (Id. at 11).
The specification paragraphs (¶¶ [0011]-[0013]) cited by Compagnie
as teaching a threshold value are reproduced below:

2 Compagnie’s references to the published specification are to
U.S. Publication 2005/0105669.
Appeal 2009-004606
Application 10/502,874

10

(Published Spec. ¶¶ [0011]-[0013]). As is apparent from the teachings
provided in the specification, a threshold value “must be determined
empirically.” (Id. at 13). Further, the alleged “example” is nothing more
than a prophetic statement that “-10%” may be a threshold value but fails to
identify the specific nature of the rod to which this potential threshold value
applies.
The evidentiary record before us on the issue of enablement is limited.
The Examiner has presented a facial case that determining a threshold value
for a particular fuel rod is not predictable. The Examiner has further
presented a logical basis to conclude that one of ordinary skill in the art
would be required to conduct undue experimentation to determine the
Appeal 2009-004606
Application 10/502,874

11
threshold value. In opposing the Examiner’s reasoning, Compagnie chose
not to rely upon evidence in the appeal. (App. Br. 38, Evidence App’x, “No
evidence relied upon in this appeal has been submitted in this application”).
Instead, Compagnie relies upon unsupported attorney argument that the
specification provides examples of how the threshold might be determined
and postulates a manner in which one of ordinary skill in the art could
potentially determine a threshold value. (App. Br. at 11, Reply Br. at 6).
We do not credit Compagnie’s attorney argument as it is not commensurate
with the teachings of the specification. See, Estee Lauder Inc. v. L'Oreal,
S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Based on the limited evidence before us, we hold that Compagnie has
failed to demonstrate that the Examiner erred in concluding that undue
experimentation was required to make and use the invention. We note
however that the outcome of this issue could have been different had
Compagnie submitted credible and sufficient evidence from one of ordinary
skill in the art demonstrating that one of ordinary skill in the art could,
without undue experimentation, determine an appropriate threshold value.

ISSUE 2: OBVIOUSNESS
F. Findings of Fact
Gradel
16. Gradel describes a method for determining the contents of a nuclear
fuel rod using impedance. (Gradel Abstract, 2:13-62).
17. Gradel’s method determines the position and composition of structural
material inside the fuel rod, such as springs or fuel pellets. (Id. at 2:50-62).
18. Gradel does not teach a method of inspecting a fuel rod that relies on a
Appeal 2009-004606
Application 10/502,874

12
ratio corresponding to locations of springs inside a fuel rod.
Holzl
19. Holzl is directed at finding faults, cracks, surface damage, poor welds
etc. in a work piece by using eddy currents induced by a field coil to test the
workpiece. (Holzl ¶ [0002]).
20. Holzl does not teach a method of inspecting a fuel rod that relies on a
ratio corresponding to locations of springs inside a fuel rod.

Skipper
21. Skipper describes a weld shape control system for controlling the
weld shape of a nuclear fuel rod seal. (Skipper Abstract).

G. Principles of Law
An invention is not patentable under 35 U.S.C. § 103 if it is obvious.
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007). Proving
obviousness however requires that one identify a reason that would have
prompted a person of ordinary skill in the relevant field to combine the
elements in the way the claimed new invention does. Id. at 418.

H. Analysis
The Examiner rejected claims 2-5 as unpatentable under 35 U.S.C.
§ 103(a) over the combined teachings of Gradel, Skipper, and Holzl. (Ans.
8-11). The Examiner determined that Gradel teaches an electromagnetic
induction method of testing the contents of the fuel rod, including the
presence of springs. (Id. at 19). The Examiner acknowledges that Gradel
Appeal 2009-004606
Application 10/502,874

13
does not teach placing recorded values corresponding to locations along a
spring (S3, S4, and S5) into the claimed ratio [(S4-S5)/S3] and subsequently
comparing the ratio to a threshold value and further fails to teach welding
the plug to the cladding. (Id. at 10). The Examiner however determined that
Holzl taught one of ordinary skill in the art to reject fuel rods by utilizing the
claimed ratio and comparing that ratio to a threshold value and that Skipper
taught welding a plug to cladding. (Id. at 10-11).
Compagnie contends that the Examiner incorrectly determined that
the claims were obvious. (App. Br. 27-34). In particular, Compagnie
contends that Holzl fails to teach measuring the effect of weld energy on an
internal part, such as a spring. (Id. at 30). Specifically, Compagnie states
that Holzl “fails to teach or suggest that an excessive welding energy could
entail an alteration of magnetic coupling if an internal part, such as a spring,
is affected in its metallurgical structure by an excessive energy.” (Id.).
Thus, Compagnie contends that “the combination of … references fail[s] to
teach determining S3, S4, and S5 in the manner indicated in the claims, and
they fail to teach determining the ratio as defined in the claim.” (Id. at 32).
Gradel teaches that measuring the impedance of a test coil
surrounding the fuel rod allows for the determination of the doping
concentrations of the fuel pellets. (Gradel, 2:50-56). Gradel also teaches
that the measurement can determine the location of structural material such
as springs or aluminum oxide pellets. (Id. at 2:56-62). Gradel does not state
that its method can be used to reject or not reject a fuel rod depending on
whether the ratio of specific measurements at particular points along the
spring are more or less than a particular threshold value.
Appeal 2009-004606
Application 10/502,874

14
Holzl describes a process and device to testing a workpiece by using
eddy currents induced by a field coil. (Holzl ¶ [0002]). Holzl does not teach
taking specific measurements at particular points along a spring and using
these specific measurements to determine whether or not the spring should
be accepted or rejected.
Skipper relates to weld shape control systems. (Skipper, Abstract).
Skipper, like Gradel and Holzl, does not teach taking specific measurements
at particular points along a spring and using these specific measurements to
determine whether or not the spring should be accepted or rejected.
The references (Gradel, Holzl and Skipper) fail to teach or provide a
reason to take specific measurements at particular points along a spring and
use these specific measurements in the formula (S4-S5)/S3 to determine
whether or not the spring should be accepted or rejected. Accordingly, we
reverse the Examiner’s rejections of claims 2-5 under 35 U.S.C. § 103(a).

I. Conclusion
1. Compagnie has not shown that the Examiner incorrectly determined
that the specification fails to enable one of ordinary skill in the art to
determine the claimed threshold value for rejecting or not rejecting a fuel
rod.
2. Compagnie has shown that the Examiner incorrectly determined that
the combination of Gradel, Skipper, and Holzl provides a reason for one of
ordinary skill in the art to utilize a method for the inspection of a nuclear
fuel rod comprising measuring and recording voltage values across various
portions of a spring using an electromagnetic induction detector.

Appeal 2009-004606
Application 10/502,874

15
J. Order
The rejections of claims 2-5 under 35 U.S.C. § 112, 1st paragraph as
failing to enable a person of ordinary skill in the art to make and use the
invention are affirmed.
The rejections of claims 2-5 under 35 U.S.C. § 103(a) as unpatentable
over Gradel, Skipper, and Holzl are reversed.

AFFIRMED

ak

Pearne & Gordon, LLP
1801 East 9th Street
Suite 1200
Cleveland, OH 44114-3108