NON-FINAL OFFICE ACTION
This Non-final Office action addresses U.S. Application No. 18/139,846, which is a reissue application of U.S. Application No. 15/966,306 (the “306 Application”), entitled “SELF-SUPPORTING RADIAL NEUTRON REFLECTOR”, which issued as U.S. Patent No. 10,991,470 (the “470 Patent") on April 27, 2021.
BRIEF SUMMARY OF THE PROCEEDING
Broadening: The instant reissue application is file within two years of issue of the 470 Patent.
Patent Term: Based upon and updated review of the file record Examiners find that the Patent term has not expired.
Litigation: Base upon Examiners review of the file itself, Examiners find that the 470 Patent is not involved in litigation.
AMENDMENT
Applicant filed the reissue application on April 26, 2023, which included a preliminary amendment (the "2023 Preliminary Amendment"). The 2023 Preliminary Amendment has been considered and entered. This action is in response to the 2023 Preliminary Amendment.
STATUS OF CLAIMS
The 470 Patent issued with claims 1-5.
As of the date of this Office Action, the status of the claims is:
Patent claims 1-5 were original as in the 470 Patent.
New claims 6-20 were added.
Accordingly, claims 1-20 are subject to the examination of this instant reissue application. Of these, claims 1, 6 and 19 are independent claims.
PRIORITY
Examiners acknowledge that the present application is a reissue of the 470 Patent that issued from 306 Application. The 306 Application is a divisional of application No. 13/607,940, filed on September 10, 2012, now Patent No. 9,959,944, which claims the benefit of U.S. Provisional Application No. 61/623,332, filed Apr. 12, 2012.
CLAIM INTERPRETATION
After careful review of the original specification, the prosecution history, and unless expressly noted otherwise by the Examiners, the Examiners find that they are unable to locate any lexicographic definitions (either express or implied) with the required clarity, deliberateness, and precision with regard to pending and examined claims. Because the Examiners are unable to locate any lexicographic definitions with the required clarity, deliberateness, and precision, the Examiners conclude that Applicant is not his own lexicographer for the pending and examined claims. See MPEP §2111.01(IV).
The Examiners further find that because the pending and examined claims herein recite neither “step for” nor “means for” nor any substitute therefore, the examined claims fail Prong (A) as set forth in MPEP §2181(I). Because all examined claims fail Prong (A) as set forth in MPEP §2181(I), the Examiners conclude that all examined claims do not invoke 35 U.S.C. §112(6th ¶). See also Ex parte Miyazaki, 89 USPQ2d 1207, 1215-16 (B.P.A.I. 2008)(precedential)(where the Board did not invoke 35 U.S.C. § 112(6th ¶) because “means for” was not recited and because applicant still possessed an opportunity to amend the claims).
Because of the Examiners’ findings above that Applicant is not his own lexicographer and the pending and examined claims do not invoke 35 U.S.C. §112(6th ¶) the pending and examined claims will be given the broadest reasonable interpretation consistent with the specification since patentee has an opportunity to amend claims. See MPEP §2111, MPEP §2111.01 and In re Yamamoto et al., 222 USPQ 934 (Fed. Cir. 1984). Under a broadest reasonable interpretation, words of the claim must be given their plain meaning, unless such meaning is inconsistent with the specification. See MPEP §2111.01(I). It is further noted it is improper to import claim limitations from the specification, i.e., a particular embodiment appearing in the written description may not be read into a claim when the claim language is broader than the embodiment. See MPEP §2111.01(II).
OBJECTION TO SPECIFICATION
The specification is objected to because it does not provide cross-reference to related application. Applicant is required to amend the specification to provide cross-reference to related application: for example and as a matter of suggestion only, amend the specification to read as follows would overcome this rejection “This application is a reissue of U.S. Application Ser. No. 15/966,306”. Appropriate correction is required.
ORIGINAL PATENT REQUIREMENT
The following is a quotation of the appropriate paragraphs of 35 U.S.C. §251 that form the basis for the rejections under this section made in this Office action:
(a) Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
MPEP §1412.01 states that the reissue claims must be for the same invention as that disclosed as being the invention of the original patent. MPEP 1412.01 further provides guidelines for determining whether the reissue claims are “for the invention disclosed in the original patent” as:
(A) the claims presented in the reissue application are described in the original patent specification and enabled by the original patent specification such that 35 U.S.C. 112, first paragraph is satisfied;
(B) nothing in the original patent specification indicates an intent not to claim the subject matter of the claims presented in the reissue application; and
(C) the newly claimed invention is clearly and unequivocally disclosed in the specification as a separate invention with the claimed combination of features.
The Fed. Cir. addressed the “original patent” requirement in Antares Pharma, Inc. v. Medac Pharma Inc., 112 USPQ2d 1865 (Fed. Cir. 2014). The court stated that “a reissue claim is for the same invention” if the original patent specification fully describes the claimed inventions, but not if the broader claims “are merely suggested or indicated in the original specification.” Antares, 112 USPQ2d at 1868 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals). Further, the court stated “it is not enough that an invention might have been claimed in the original patent because it was suggested or indicated in the specification.” Rather, the specification must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 112 USPQ2d at 1871 (citing U.S. Supreme Court’s decision in U.S. Industrial Chemicals) (citation omitted), or that “the exact embodiment claimed on reissue [be] expressly disclosed in the specification.” Id.
Recently, the Fed. Cir. stated:
Thus, for broadening reissue claims, the specification of the original patent must do more than merely suggest or indicate the invention recited in reissue claims; “[I]t must appear from the face of the instrument that what is covered by the reissue was intended to have been covered and secured by the original.” Indus Chems, 315 US at 676 (emphasis in Forum US). Stated differently, the original patent “must clearly and unequivocally disclose the newly claimed invention as a separate invention.” Antares, 771 F.3d at 1362. 1
Claims 6-18 are rejected under 35 U.S.C. §251 because they are not for the same invention as that disclosed as being the invention in the original Patent.
First for example, Examiners find that each of patent claims 1-5 of the 470 Patent recite “constructing a core former by stacking a plurality of single piece annular rings wherein each single piece annular ring comprises neutron-reflecting material; and loading a nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former, wherein the stack of single-piece annular rings does not include welds or fasteners that axially restrain adjacent single-piece annular rings together”.
Upon comparison with patent claims 1-5, Examiners find new claims 6-18 in this reissue application do not require “loading a nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former”.
Examiners do not find an unequivocal disclosure in the 470 Patent for self-supporting radial neutron reflector circuit that does not require “a nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former”. For example, Examiners find in the abstract and mostly embodiments of the invention of the 470 Patent, which is shown in FIGS. 1-3 of the 470 Patent. Within these embodiments, for example, the reactor core 14 is contained in a core former 16 which in turn is contained in a core basket 18 and the reactor core comprising fissile material. Examiners are unable to find an embodiment or disclosure that does not require a nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former. Moreover, the Abstract and the specification disclose:
“A nuclear reactor core comprising fissile material is surrounded by a core former… A core basket may contain the nuclear reactor core and the core former”. (Abstract)
“In a nuclear reactor, fissile material is arranged in the reactor such that the neutron flux density resulting from fission reactions is sufficient to maintain a sustained fission process. In a commercial reactor, fissile material is typically provided in the form of fuel rods mounted in modular, elongated fuel assemblies which are generally square or hexagonal in cross section. A plurality of such fuel assemblies are arranged together to form a reactor core which is contained inside a cylindrical stainless steel core basket…” (col. 1, lines 14-23)
“According to one aspect, an apparatus comprises a nuclear reactor core comprising fissile material and a core former surrounding the nuclear reactor core…” (col. 2, lines 7-9)
“According to another aspect, an apparatus comprises a nuclear reactor core comprising fissile material, a core former surrounding the nuclear reactor core and including one or more single-piece annular rings wherein each single-piece annular ring comprises neutron-reflecting material, and a core basket containing the nuclear reactor core and the core former…” (col. 2, lines 19-25)
“According to another aspect, a method comprises: constructing a core former by stacking a plurality of single piece annular rings wherein each single piece annular ring comprises neutron-reflecting material; and loading a nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former. In some embodiments the method further includes, after the constructing and loading, operating a nuclear reactor comprising primary coolant disposed in a pressure vessel that also contains the constructed core former and loaded nuclear reactor core in order to heat the primary coolant…” (col. 2, lines 35-45)
“The reactor core 14 is contained in a core former 16 which in turn is contained in a core basket 18. The reactor core 14 can have substantially any configuration compatible with a light water reactor. In the illustrative configuration shown in FIG. 3, the reactor core includes 69 PWR type fuel assemblies each having a 17×17 array of fuel rods supported by a bottom grid structure that is part of a core former 16… Other vessel configurations and reactor types are also contemplated, including PWR designs with external steam generators, integral PWR designs with steam generators disposed inside the pressure vessel, various BWR designs, and so forth.” (col. 3, lines 32-56)
As noted above, the original patent requirement puts a limit on the manner to which reissue applicants can broaden the patent claims in reissue. Specifically, claims that are broadened in reissue that cover a new scope/class of invention must have an unequivocal disclosure on the face of the original patent for that new class of invention as a separate invention. Following a careful review of claims 6-18 in this reissue application with respect to patent claims 1-5 as patented in the 470 Patent, Examiners find the new scope of claims 6-18 covers a new invention not unequivocally disclosed on the face the 470 Patent, i.e., Examiners do not find an unequivocal disclosure or a discussion of the new invention of the self-supporting radial neutron reflector circuit that does not including the nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former. Thus, Examiners conclude claims 6-18 presented in this reissue application fail the original patent requirement and thus are rejected under 35 U.S.C. §251.
Examiners further find this issue in this reissue application is analogous to the recent Federal Circuit decision in Forum US, Inc. v. Flow Valve, LLC, 926 F.3d 1346 (Fed. Cir. 2019). In Forum US, the original patent claims were drawn to a workpiece having a body member and a plurality of arbors (arbors circled in FIGS. 4 and 5 at issue):
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Forum US, 926 F.3d at 1348-49. In reissue, patentee broadened the claims to simply remove the requirement as to arbors. Id. at 1349. The Federal Circuit determined that the new claims did not comply with the original patent requirement of section 251 because the face of the patent did not disclose any arbor-less embodiment, and the abstract, summary of invention, and all disclosed embodiments including arbors. Id. at 1352. The Court concluded that the specification did not clearly and unequivocally disclose an embodiment without arbors, thus the original patent requirement was violated by broadening the claims to no longer require arbors. Id. Similarly, the 470 Patent here does not clearly and unequivocally disclose the self-supporting radial neutron reflector circuit that does not including the nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former. Thus, to broaden the claims to permit Applicant to simply delete this nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former from the claims runs afoul of the original patent requirement in the same manner as at issue in Forum.
REISSUE OATH/DECLARATION
37 C.F.R. §1.175 Reissue oath or declaration (in part).
(a) The inventor’s oath or declaration for a reissue application, in addition to complying with the requirements of § 1.63, § 1.64, or § 1.67, must also specifically identify at least one error pursuant to 35 U.S.C. 251 being relied upon as the basis for reissue and state that the applicant believes the original patent to be wholly or partly inoperative or invalid by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than the patentee had the right to claim in the patent.
(b) If the reissue application seeks to enlarge the scope of the claims of the patent (a basis for the reissue is the patentee claiming less than the patentee had the right to claim in the patent), the inventor's oath or declaration for a reissue application must identify a claim that the application seeks to broaden. A claim is a broadened claim if the claim is broadened in any respect.
A Reissue Declaration filed August 8, 2023 (the “2023 Reissue Declaration”) along with this reissue application is acknowledged.
Examiners do note that the 2023 Reissue Declaration states error, but is an improper error. In the 2023 Reissue Declaration, Applicant states the error as:
“Patentee claimed less than he had a right to claim. New claims 6-20 have been added to cover additional aspects of the invention. New independent claim 6 recites a method that does not include the requirement of "loading a nuclear reactor core inside the core former" that appears in claim 1. Thus, patentee wishes to broaden claim 1 by providing a new independent claim that deletes this limitation”.
However, as provided above, Examiners find the presentation of new claims 6-18 are improper under the original patent requirement. Thus, this error is not a valid basis on which to base this reissue.
REJECTIONS – 35 U.S.C. §251
35 U.S.C. §251 Reissue of defective patents.
(a) IN GENERAL.—Whenever any patent is, through error, deemed wholly or partly inoperative or invalid, by reason of a defective specification or drawing, or by reason of the patentee claiming more or less than he had a right to claim in the patent, the Director shall, on the surrender of such patent and the payment of the fee required by law, reissue the patent for the invention disclosed in the original patent, and in accordance with a new and amended application, for the unexpired part of the term of the original patent. No new matter shall be introduced into the application for reissue.
A. Rejection based on Defective Declaration
Claims 6-18 and this application as a whole are rejected as being based upon a defective Declaration under 35 U.S.C. §251 as set forth above. See 37 C.F.R. §1.175. The nature of the defects in the 2023 Reissue Declaration is set forth in the discussion above in this Office action.
B. Rejection based on Original Patent Requirement
Claims 6-18 and this application as a whole are rejected under 35 U.S.C. §251 as failing original Patent requirement. The nature of the original Patent Requirement is set forth in the discussion above in this Office action.
CLAIM REJECTIONS - 35 USC § 112
The following is a quotation of 35 U.S.C. 112(b):
(b) CONCLUSION.—The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the inventor or a joint inventor regards as the invention.
The following is a quotation of 35 U.S.C. 112 (pre-AIA ), second paragraph:
The specification shall conclude with one or more claims particularly pointing out and distinctly claiming the subject matter which the applicant regards as his invention.
Claim 10 is rejected under 35 U.S.C. 112(b) or 35 U.S.C. 112 (pre-AIA ), second paragraph, as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor (or for applications subject to pre-AIA 35 U.S.C. 112, the applicant), regards as the invention.
Regarding claim 10: limitation “… welding the edges of the plates together to form each single-piece annual ring” cited in line 2 of claim 10 is inconsistent with limitations cited in claim 6. Claim 6 recites no welds are used but dependent claim 10 requires welding plates.
CLAIM REJECTIONS - 35 USC § 103
In the event the determination of the status of the application as subject to AIA 35 U.S.C. 102 and 103 (or as subject to pre-AIA 35 U.S.C. 102 and 103) is incorrect, any correction of the statutory basis (i.e., changing from AIA to pre-AIA ) for the rejection will not be considered a new ground of rejection if the prior art relied upon, and the rationale supporting the rejection, would be the same under either status.
The following is a quotation of pre-AIA 35 U.S.C. 103(a) which forms the basis for all obviousness rejections set forth in this Office action:
(a) A patent may not be obtained though the invention is not identically disclosed or described as set forth in section 102, if the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made to a person having ordinary skill in the art to which said subject matter pertains. Patentability shall not be negated by the manner in which the invention was made.
Claims 6-9 and 11 are rejected under pre-AIA 35 U.S.C. 103(a) as being unpatentable over Thome et al (U.S Patent No. 8,971,477) (“Thome”).
Thome discloses an integral helical coil pressurized water nuclear reactor including:
constructing a core former (Thome teaches in col. 2, line 60 “FIG. 2A is a perspective view of core former structure”) by stacking a plurality of single piece annular rings (Thome teaches in col. 5, line 5 “the upper vessel is composed of multiple ring forgings”) wherein each single piece annular ring comprises neutron-reflecting material (Thome teaches in col. 3, lines 41-43 “The core former structure 51 is suitably a welded and machined structure made of 304L stainless steel or another suitable material”. Thus, as is well known in the art, different type of material varies depending on the application. Clearly, the rings of Thome is capable of using a neutron reflecting material depending on the particular environment in which the circuit is employed. One of ordinary skill in the art as routine design expedients know that different type of material, for example, neutron reflecting material, can be chosen in order to produce correspondingly different results to maximize the performance. For example, see U.S 6,865,245 (“the 245 Patent”) as evident. The 245 Patent teaches in col. 6, lines 4-6 “… The guide ring 32 can be made of graphite or some other strong, solid, neutron-reflecting material used in other parts of the core …”. Also see JP2003114292 teaches ring block is a neutron reflector ring block 20a, which forms the neutron reflector.
wherein the stack of single-piece annular rings does not include welds or fasteners that axially restrain adjacent single-piece annular rings together (Thome teaches in col. 2, lines 19-29 “With further reference to FIG. 2, in some embodiments the lower vessel 1 comprises three forgings of SA508 Gr 4N Cl 2 carbon steel… This illustrative arrangement of the vessel sections has the advantage of eliminating welds near the core mid-plane where the fluence levels are highest.”)
Regarding claim 7: The method of claim 6 further comprising forming the single piece annular rings (Thome teaches in col. 5, lines 4-5 “the upper vessel is composed of multiple ring forgings..”).
Regarding claim 8: The method of claim 7 further wherein the forming step comprises forging each single-piece annular ring (Thome teaches in col. 5, lines 4-5 “the upper vessel is composed of multiple ring forgings..”)
Regarding claim 9: The method of claim 7 wherein the forming step comprises casting each single-piece annular ring (casting limitation which seems like a known method of making rings as an alternative to forging cited in claim 8. Thome teaches in col. 5, lines 4-5 “the upper vessel is composed of multiple ring forgings..”)
Regarding claim 11: The method of claim 7 wherein the single piece annular rings comprise stainless steel (Thome teaches in col. 5, lines 6-7 “the final weldment is clad internally with 0.25'' stainless steel”).
ALLOWABLE SUBJECT MATTER
Regarding claim 1: The prior arts of record do not specifically discloses: “loading a nuclear reactor core inside the core former by disposing fuel assemblies comprising fissile material inside the core former” in combination with “wherein the stack of single-piece annular rings does not include welds or fasteners that axially restrain adjacent single-piece annular rings together” as required in claim 1.
Regarding claims 2-5: These claims depend from claim 1 and are therefore allowable based upon dependency.
Regarding claim 19: The prior arts of record do not specifically discloses: “loading a nuclear reactor core inside a core former by disposing fuel assemblies comprising fissile material inside the core former, … and the stack of single-piece annular rings does not include welds or fasteners that axially restrain adjacent single-piece annular rings together” in combination with “operating a nuclear reactor comprising primary coolant disposed in a pressure vessel also containing the constructed core former and loaded nuclear reactor core to heat the primary coolant” as required in claim 19.
Regarding claim 20: This claim depends from claim 19 and is therefore allowable based upon dependency.
INFORMATION DISCLOSURE STATEMENT
The Information Disclosure Statement filed on April 26, 2023 (“April 2023 IDS”) has been received and considered as indicated on the attached signed sheets. In accordance with MPEP § 1406, Examiners have reviewed and considered the prior art of record in the original prosecution of the 470 Patent. Applicant(s) are reminded that a listing of the information of record in the original prosecution of the 470 Patent need not be resubmitted in this reissue application unless Applicant(s) desire the information to be printed on a patent issuing from this reissue application.
JP2003114292 (“the 292 Reference”) cited in PTO 1449 is a closet reference with respect to the claimed invention. The 292 Reference does in fact disclose a structure of a nuclear reactor including neutron reflector ring blocks 20a to 20h are stacked. However, the 292 Reference fails to disclose “wherein the stack of single-piece annular rings does not include welds or fasteners that axially restrain adjacent single-piece annular rings together” because the 292 Reference discloses the neutron reflector ring blocks 20a to 20h are provided with rod holes 21 for fastening and fixing the neutron reflector ring blocks 20a to 20h with rods or the like (See Patent Translate, [0004]). Thus, claims 1-20 are patentably distinct over the 292 Reference.
PRIOR ART CITED IN PTO-892
The prior art made of record which is considered pertinent to Applicant’s disclosure is listed on the document titled ‘Notice of Reference Cited’ (“PTO-892”). Unless expressly noted otherwise by the Examiners, all documents listed on the PTO-892 are cited in their entirety.
US Patent No. 5,811,944 to Sampayan (“Sampayan”) cited in PTO 892 is also a closet reference with respect to the claimed invention. Sampayan does in fact disclose a structure of a stack of single-piece annular rings (See Fig. 2). However, Sampayan also fails to disclose “wherein the stack of single-piece annular rings does not include welds or fasteners that axially restrain adjacent single-piece annular rings together” because Sampayan discloses the use of at least one metal between each annular ring to bond the stack together to hold a vacuum and to provide uniform voltage division for each layer (See Figs. 1A-1C). Thus, claims 1-20 are patentably distinct over the Sampayan.
PRIOR OR CONCURRENT PROCEEDINGS
Applicant is reminded of the obligation to apprise the Office of any prior or concurrent proceedings in which the 470 Patent is or was involved, such as interferences or trials before the Patent Trial and Appeal Board, reissues, reexaminations, or litigations and the results of such proceedings.
INFORMATION MATERIAL TO PATENTABILITY
Applicant(s) are reminded that they “have a continuing duty under 37 CFR §1.56 to timely apprise the Office of any information which is material to the patentability of the claims under consideration in the reissue application. See MPEP §1418.” - MPEP § 1406.
CONCLUSION
Any inquiry concerning this communication or earlier communications from the Examiner should be directed MY TRANG TON whose telephone number is (571) 272-1754. The Examiner can normally be reached on 7:00am - 6:00pm, Monday - Thursday.
If attempts to reach the Examiner by telephone are unsuccessful, the Examiner’s supervisor, Andrew J. Fischer, SPE Art Unit 3992, can be reached at (571) 272-6779. The fax phone number for the organization where this application or proceeding is assigned is 571-273-9900.
Information regarding the status of published or unpublished applications may be obtained from Patent Center. Unpublished application information in Patent Center is available to registered users. To file and manage patent submissions in Patent Center, visit: https://patentcenter.uspto.gov. Visit https://www.uspto.gov/patents/apply/patent-center for more information about Patent Center and https://www.uspto.gov/patents/docx for information about filing in DOCX format. For additional questions, contact the Electronic Business Center (EBC) at (866) 217-9197 (toll-free). If you would like assistance from a USPTO Customer Service Representative, call (800) 786-9199 (IN USA OR CANADA) or (571) 272-1000.
Signed:
/MY TRANG TON/ Primary Examiner, Art Unit 3992
Conferees:
/KENNETH WHITTINGTON/ Primary Examiner, Art Unit 3992
/ANDREW J. FISCHER/ Supervisory Patent Examiner, Art Unit 3992
1 Forum US Inc. v. Flow Valve LLC, 926 F.3d 1346 (Fed. Cir. 2019).
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