15013073 - (D) (P.T.A.B. Apr. 2, 2020)

WESTINGHOUSE ELECTRIC COMPANY LLC

Patent Trials and Appeals BoardApr 2, 2020

15013073 - (D) (P.T.A.B. Apr. 2, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE 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 APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 15/013,073 02/02/2016 JOONHYUNG CHOI ARF-2015-007 6495 26353 7590 04/02/2020 Westinghouse Electric Company LLC K&L Gates LLP 210 Sixth Avenue K&L Gates Center Pittsburgh, PA 15222-2613 EXAMINER GARNER, LILY CRABTREE ART UNIT PAPER NUMBER 3646 NOTIFICATION DATE DELIVERY MODE 04/02/2020 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): USPatentMail@klgates.com spadacjc@westinghouse.com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE __________ BEFORE THE PATENT TRIAL AND APPEAL BOARD __________ Ex parte JOONHYUNG CHOI and YURIY ALESHIN __________ Appeal 2019-004970 Application 15/013,073 Technology Center 3600 __________ Before CHARLES N. GREENHUT, MICHAEL L. HOELTER, and ANNETTE R. REIMERS, Administrative Patent Judges. GREENHUT, Administrative Patent Judge. DECISION ON APPEAL Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the Examiner’s decision to reject claims 1–13. See Final Act. 1. We have jurisdiction under 35 U.S.C. § 6(b). We AFFIRM IN PART. 1 We use the word “Appellant” to refer to “applicant” as defined in 37 C.F.R. § 1.42. Appellant identifies the real party in interest as Westinghouse Electric Company LLC. Appeal Br. 1. Appeal 2019-004970 Application 15/013,073 2 STATEMENT OF THE CASE The claims are directed to a hold-down spring apparatus usable with a fuel assembly of a nuclear reactor in a nuclear installation. Claim 1, reproduced below, is illustrative of the claimed subject matter: 1. A support apparatus that is usable with a number of springs of a spring apparatus of a nuclear installation, the spring apparatus having a plurality of elongated springs that are stacked together one upon the other and that are affixed at a location thereon to a nozzle of a fuel assembly of the nuclear installation, the number of springs at another location thereon that is spaced from the location being engaged with an upper core plate of the nuclear installation, the number of springs engaged between the nozzle and the upper core plate being deformed between a compressed state and another compressed state when the nuclear installation is operated between a cold condition and a hot condition, the compressed state and the another compressed state being different than one another, the support apparatus comprising: a support that is structured to be stacked together with the number of springs and to be affixed to the nozzle; and an abutment apparatus that comprises a bumper that is affixed to the support and that is spaced a first distance from an end of the support, the bumper protruding a second distance away from a surface of the support springs and being structured to engage the number of springs at a position on the number of springs disposed between the location and the another location during at least a portion of the deformation between the compressed state and the another compressed state. REFERENCES The prior art relied upon by the Examiner is: Name Reference Date Burfin US 5,812,624 Sept. 22, 1998 Murakami US 6,154,514 Nov. 28, 2000 Appeal 2019-004970 Application 15/013,073 3 OBJECTIONS AND REJECTIONS Claims 1–82 are objected to for issues related to claim clarity. Final Act. 3. Claims 1, 7, and 8 are rejected under 35 U.S.C. § 112(a), as failing to comply with the enablement requirement. Final Act. 3. Claims 1–63 and 9 are rejected under 35 U.S.C. § 112(b), as being indefinite. Final Act. 5. Claims 1 and 7 are rejected under 35 U.S.C. § 103 as being unpatentable over Murakami and Burfin. Final Act. 6. Claims 8–13 are rejected under 35 U.S.C. § 103 as being unpatentable over Murakami. Final Act. 9. OPINION Objections Appellant seeks our review of the Examiner’s objections indicating that “the another location,” “the another bumper,” “the another first distance,” “the another second distance,” and “the another compressed state” recited in claims 1, 7, and 8, respectively, as being grammatically incorrect. See App. Br. 4–5; Final Act. 3. 2 Although the Examiner does not list claim 8 in the first sentence of paragraph 6 in the Final Office Action, the Examiner discusses claim 8 in the next sentence. See Final Act. 3. 3 Although the Examiner does not list claims 2–6 in the statement of the rejection (see Final Act. 5), we understand these claims to be rejected by virtue of their dependency, either directly or indirectly, on claim 1. Appeal 2019-004970 Application 15/013,073 4 The Examiner replies that “the arguments regarding claim objections will not be addressed during the appeal process” because “[c]laim objections are usually resolved during the prosecution process.” Ans. 3. The Examiner is correct that “objections” are typically reserved for formal or procedural matter outside our jurisdiction. Here, however, the Examiner objects to the claims indicated above for issues related to claim clarity based on terms appearing in the claims. Claim clarity for claim terminology is an issue typically addressed under 35 U.S.C. § 112(b) or, formerly, § 112, second paragraph. The review of such “adverse decisions” falls within our 35 U.S.C. § 6 jurisdiction regardless of whether termed “objection” or “rejection” by the Examiner. In re Haas 486 F.2d 1053, 1056 (CCPA 1973); In re Searles, 422 F.2d 431, 434–435 (CCPA 1970). We agree with Appellant that the term “the another” is not grammatically incorrect, and as Appellant points out, this term, though not frequently used in everyday language, is commonly used for precision in patent claim drafting. Appeal Br. 4. Just because the Examiner prefers the term “second” over the term “another” (see Final Act. 3), that does not mean the latter causes the claim language to be indefinite. Accordingly, we do not sustain the Examiner’s objections in this regard. Enablement The Examiner’s enablement rejection is premised on the determination that the term “a nozzle” as recited in claims 1, 7, and 8 encompasses a bottom nozzle such that these claims encompass the claimed Appeal 2019-004970 Application 15/013,073 5 support apparatus or spring apparatus affixed to a bottom nozzle, which is not supported by the original disclosure. See Final Act. 3–4. We agree with Appellant that this determination is erroneous. As Appellant points out, the Specification provides an enabling disclosure of the claimed support apparatus or spring apparatus affixed to a nozzle and engaged with an upper core plate. See Appeal Br. 5–6; Spec. Figs 1, 5, 11. Further, the Specification discloses that the bottom nozzle 12 is located near the lower core plate 14 and the top nozzle 16 is located near the upper core plate 42. See Spec. Fig. 1. Each of claims 1 and 7 recites “a nozzle” that is “engaged with an upper core plate” and claim 8 recites a similar limitation. See Appeal Br. 12–15 (Claims App.). As such, a skilled artisan, reading the Specification, would understand the term “a nozzle” recited in the claims, as not encompassing the bottom nozzle depicted in Appellant’s Specification. The Examiner does not articulate a reasonable basis for interpreting the term “a nozzle” as encompassing such a bottom nozzle, i.e., a manner that is different from the way this term is used in Appellant’s Specification. “[T]he PTO applies to the verbiage of the proposed claims the broadest reasonable meaning of the words in their ordinary usage as they would be understood by one of ordinary skill in the art, taking into account whatever enlightenment by way of definitions or otherwise that may be afforded by the written description contained in the applicant’s specification.” In re Morris, 127 F.3d 1048, 1054 (Fed. Cir. 1997) (emphasis added); see also In re Prater, 415 F.2d 1393, 1404-05 (CCPA 1969) (“‘[R]eading a claim in light of the specification,’ to thereby interpret limitations explicitly recited in the claim, is a quite different thing from ‘reading limitations of the specification into a claim,’ to thereby narrow the scope of the claim by Appeal 2019-004970 Application 15/013,073 6 implicitly adding disclosed limitations which have no express basis in the claim.”). “[When giving claim] terms their broadest reasonable construction, the construction cannot be divorced from the specification.” In re NTP, 654 F. 3d 1279, 1288 (Fed. Cir. 2011). “[A] disclosure, unequivocal in and of itself, may not be held wanting merely by reason of a speculation that one skilled in the art might interpret the teaching of the inventor in a remote and equivocal manner.” In re Wolfensperger, 302 F. 2d 950, 954 (CCPA 1962). As the Examiner’s rejection presently before us is predicated on a construction of “a nozzle” that extends beyond the ambit of reasonableness, we reverse the Examiner’s rejection of claims 1, 7, and 8 as failing to comply with the enablement requirement. Indefiniteness Claims 1–6: The Examiner determines that the term “the support springs” as recited in independent claim 1, lacks antecedent basis. Final Act. 5. The Examiner notes that this recitation appears to be a typographical error. Id. Appellant acknowledges that “the support springs” is a typographical error and should read instead as “the support.” Appeal Br. 7. Appellant argues that “[t]he rejection thus should be reversed pending correction by Examiner’s Amendment.” Id.; see also Reply Br. 2. The Examiner correctly responds that “the rejection should not be reversed through the appeal process because any new amendment should be formally submitted and any new claims should be entered prior to being reviewed during the prosecution process.” Ans. 4. Under 37 C.F.R. § 41.37(c)(1)(iv) uncontested rejections will be affirmed. See In re Berger, Appeal 2019-004970 Application 15/013,073 7 279 F.3d 975 (Fed. Cir. 2002) (Affirming the Board’s affirmance of an uncontested rejection, holding that the appellant had waived the right to contest the rejection by not presenting arguments on appeal to the Board); Hyatt v. Dudas, 551 F.3d 1307, 1314 (Fed. Cir. 2008) (“the applicant can waive appeal of a ground of rejection”). We thus sustain the rejection of claim 1 and claims 2–6 depending therefrom, under 35 U.S.C. § 112(b). Claim 9: Claim 9 recites “[t]he spring apparatus of Claim 8 wherein another spring of the plurality of springs has a tail, and wherein the spring has an opening formed therein, the tail being movably received in the opening.” Appeal Br. 15 (Claims App.); emphasis added. The Examiner states that “[i]t is unclear how an opening receive[s] a tail, where the tail itself is the location of the opening.” Final Act. 5. The Examiner has the erroneous impression that claim 9 can be interpreted in a manner in which both the tail and the opening can belong to the same spring. Ans. 4. Such is not the case because dependent claim 9 specifies that “a tail” belongs to “another spring” whereas “an opening” belongs to “the spring,” which is recited in parent claim 8 as “a spring of the plurality of springs being in a free state wherein the spring is uncompressed and is disengaged from the upper core plate.” See Appeal 15 (Claims App.), emphasis added; see also Appeal Br. 7. For these reasons, the rejection of claim 9 under 35 U.S.C. § 112(b) is not sustained. Appeal 2019-004970 Application 15/013,073 8 Obviousness over Murakami and Burfin Claim 1 requires, among other things, “a support that is structured to be stacked together with the number of springs and to be affixed to the nozzle” and “an abutment apparatus that comprises a bumper that is affixed to the support and that is spaced a first distance from an end of the support.” Appeal Br. 12 (Claims App.); emphasis added. Claim 7 requires similar limitations. Id. at 13–14. The Examiner relies on Burfin for these limitations. Final Act. 7 (citing Burfin Figs. 6, 7).4 Appellant contests the Examiner’s findings in regard to these limitations. Appeal Br. 7–8. Appellant argues that the Examiner improperly combines two separate embodiments of Burfin, namely Burfin’s Figure 6 and Figure 7. Id. at 7. The Examiner responds that “[t]he Examiner is not combining different embodiment” (Ans. 5) because: either the top plate (28) in fig. 6 or the fixing pin (47) is structured to be stacked together with the number of springs (38 in fig. 6 or 38’/38’a in fig. 7) and to be affixed to the top nozzle (26 in fig. 6, 26’ in fig. 7). The top plate (28) in fig. 6 is a support because it supports the springs resting on it. The fixing pin (47) in fig. 7 is also a support because it is fixing the springs in place. Id. at 7. Indeed, Burfin discloses that Figure 7 is a different embodiment than Figure 6. See Burfin 4:3–1. If the Examiner does not combine these two embodiments, we fail to see how it can be said that Burfin discloses all of the limitations at issue in either embodiment. In regard to the embodiment of 4 The Examiner relies on Murakami for limitations other than those discussed above. Final Act. 6–7. Appeal 2019-004970 Application 15/013,073 9 Figure 6, and if the Examiner does not combine this embodiment with the embodiment of Figure 7, the Examiner fails to explain which component in Figure 6 corresponds to the claimed bumper. In regard to the embodiment of Figure 7, if the Examiner does not combine this embodiment with the embodiment of Figure 6, the Examiner finds that the fixing pin 47 corresponds to the claimed support. Although the Examiner identifies rounded surface 49 as the claimed bumper in this embodiment, Figure 7 shows fixing pin 47 traversing perpendicularly through the ends of spring leaves 38’a in order to fix spring leaves 38’ to the nozzle. See Burfin Fig. 7. Thus, we fail to see how it can be said that Burfin’s fixing pin 47 is stacked together with spring leaves 38.’ See Appeal Br. 7 (arguing that fixing pin 47 is not “‘structured to be stacked together with the number of springs’ as is recited in Claim 1”). Because the Examiner fails to articulate adequate reasoning supported by rational underpinnings for picking and choosing elements from the various embodiments of Burfin, the rejection of claims 1 and 7 as being unpatentable over Murakami and Burfin is not sustained. Obviousness over Murakami alone Independent claim 8 requires, among other things, when the nuclear installation is in a hot condition: a subset of the plurality of springs consisting of fewer than all of the plurality of springs being in another compressed state and each being compressively engaged with the upper core plate, and a spring of the plurality of springs being in a free state wherein the spring is uncompressed and is disengaged from the upper core plate. Appeal Br. 14–15 (Claims App.). The Examiner finds that Murakami discloses that, when a nuclear installation is in a hot condition, Appeal 2019-004970 Application 15/013,073 10 a subset of the plurality of springs consisting of fewer than all of the plurality of springs [is] in another compressed state and each [is] compressively engaged with the upper core plate {Murakami, figs. 2, 3 and 6; Col. 3, line 48 to col. 4, line 30.}, and a spring of the plurality of springs [is] in a free state wherein [the spring] is uncompressed and is disengaged from the upper core plate {Murakami: Fig. 1, the spring 23 is not engaged with the upper core plate. Fig. 3 shows that the spring stress is dependent on the spring thickness. Obviously, a spring of the plurality of springs can be in a free state if a spring has certain thickness.}. Final Act. 9. The Examiner, however, goes on to conclude that it would have been obvious to make one or multiple of the springs being in a free state wherein is [sic] uncompressed and is disengaged from the upper core plate by using different thickness of spring. Reducing stress can reduce the occurrence of stress corrosion and one would be motivated to optimize the thickness of the spring to achieve the predictable advantage. Id. at 10. In the Answer, the Examiner takes the position that although Murakami does not explicitly state[] that there is “a subset of the plurality of springs consisting of fewer than all of the plurality of springs”, one of ordinary skill in the art would expect such subset of spring would exhibit the same behavior as the springs shown in fig. 3, i.e. having different stresses/forces in the hot and cold states. One of ordinary skill in the art would also apply different spring thickness or different number of springs for different stress levels to optimize the disengagement. Ans. 3. Appellant correctly argues that “Fig. 1 is not disclosed in Murakami et al. as being a depiction of the nuclear installation being in a hot condition as recited in Claim 8” and that instead, “Fig. l depicts the fuel assembly (10) in Appeal 2019-004970 Application 15/013,073 11 a constructed condition but before it has been installed into a nuclear reactor, and after which installation an initial deformation is imparted to the hold down spring (which deformation is not depicted in Fig. 1).” Appeal Br. 9– 10. Notably, Murakami discloses “[w]hen the fuel assembly 10 equipped with the hold down spring 20 constructed in the above described manner is loaded in the core of a nuclear reactor in the state shown in FIG. 1, an initial deformation 20 is imparted to the hold-down spring. Since in such a cold state, . . . .” Murakami 3:40–44; emphasis added. Appellant also correctly argues that because Murakami discloses “the upper plate spring 21 has an abutting ledge 21d which comes [into] contact with an upper surface of the lower plate spring 23 after an initial deformation and thereafter the upper and lower plate spring 21, 23 work as an integral spring means” (see Murakami 3:35–39 (emphasis added); see also id. at Figs. 1, 1a), Murakami thus suggests that there is no situation in its disclosure that “the spring 23 ‘is uncompressed and is disengaged from the upper core plate’ when the nuclear installation is in a hot condition, as is recited in Claim 8.” Appeal Br. 10. We thus agree with Appellant that: nothing pointed out by the Examiner includes any disclosure, teaching, or suggestion of “a spring of the plurality of springs being in a free state wherein the spring is uncompressed and is disengaged from the upper core plate” (emphasis added) when the nuclear installation is in a hot condition, as is recited in Claim 8. Reply Br. 5. Moreover, examination “shall be complete with respect . . . to the patentability of the invention as claimed.” 37 C.F.R. § 1.104(a)(1). “The reasons for any adverse action . . . will be stated in an Office action and such information or references will be given as may be useful in aiding the Appeal 2019-004970 Application 15/013,073 12 applicant . . . to judge the propriety of continuing the prosecution.” 37 C.F.R. § 1.104(a)(2). “The pertinence of each reference, if not apparent, must be clearly explained and each rejected claim specified.” 37 C.F.R. § 1.104(c)(2). Here, in the Final Office Action, there appears to be contradictions in the Examiner’s findings. The Examiner first finds that Murakami discloses a spring of the plurality of springs in a free state that is uncompressed and disengaged from the upper core plate during a hot condition (Final Act. 9), but then appears to conclude that it would have been obvious to modify Murakami to have these features (id. at 10), which suggests that Murakami does not disclose these features. In the Answer, the Examiner acknowledges that Murakami does not disclose “a subset of the plurality of springs consisting of fewer than all of the plurality of springs” (Ans. 3) although in the Final Office Action, it appears that the Examiner took a contrary position, that Murakami does disclose this limitation (Final Act. 9). Thus, it is unclear from the record how the teachings and disclosures of Murakami are being applied by the Examiner to reject claim 8. Further, the Examiner’s rationales concerning reducing stress (Final Act. 10) and applying different spring thickness (Ans. 3) are conclusory. Our reviewing court has stated that “rejections on obviousness grounds cannot be sustained by mere conclusory statements; instead, there must be some articulated reasoning with some rational underpinning to support the legal conclusion of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006), cited with approval in KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418 (2007). As such, a preponderance of the evidence does not support the Examiner’s determination that the proposed modification would have been obvious. Appeal 2019-004970 Application 15/013,073 13 For these reasons, we do not sustain the rejection of claim 8, and claims 9–13 depending therefrom, as being unpatentable over Murakami. CONCLUSION The Examiner’s rejection of claims 1–6 under 35 U.S.C. § 112(b), as being indefinite, is affirmed. All other objections or rejections are reversed. DECISION SUMMARY Claims Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed 1–85 112(b) Indefiniteness 1–8 1, 7, 8 112(a) Enablement 1, 7, 8 1–6, 9 112(b) Indefiniteness 1–6 9 1, 7 103 Murakami, Burfin 1, 7 8–13 103 Murakami 8–13 Overall Outcome 1–6 7–13 No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). AFFIRMED IN PART 5 The Examiner addressed these issues under the umbrella of objections, rather than rejections. Final Act. 3.