DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application, filed on or after March 16, 2013, is being examined under the first inventor to file provisions of the AIA .
Election/Restrictions
Restriction to one of the following inventions is required under 35 U.S.C. 121:
I. Claims 1-10, drawn to an apparatus, classified in G21C 17/06.
II. Claims 11-20, drawn to a method, classified in G21C 3/334.
The inventions are independent or distinct, each from the other because:
Inventions II and I are related as process and apparatus for its practice. The inventions are distinct if it can be shown that either: (1) the process as claimed can be practiced by another and materially different apparatus or by hand, or (2) the apparatus as claimed can be used to practice another and materially different process. (MPEP § 806.05(e)). In this case the apparatus as claimed may be used to produce medical radioisotopes.
Restriction for examination purposes as indicated is proper because all the inventions listed in this action are independent or distinct for the reasons given above and there would be a serious search and/or examination burden if restriction were not required because one or more of the following reasons apply:
a. The inventions have acquired a separate status in the art in view of their different classification;
b. The inventions have acquired a separate status in the art due to their recognized divergent subject matter;
c. The inventions require a different field of search (for example, searching different classes/subclasses or electronic resources, or employing different search queries);
d. The prior art applicable to one invention would not likely be applicable to another invention;
e. The inventions are likely to raise different non-prior art issues under 35 U.S.C. 101 and/or 35 U.S.C. 112(a).
During a conversation with Eric Yurinko on 7/6/2026 a provisional election was made without traverse to prosecute the invention of Group II corresponding to claims 11-20. Affirmation of this election must be made by applicant in replying to this Office action. Claims 1-10 are withdrawn from further consideration by the examiner, 37 CFR 1.142(b), as being drawn to a non-elected invention.
The examiner has required restriction between product or apparatus claims and process claims. Where applicant elects claims directed to the product/apparatus, and all product/apparatus claims are subsequently found allowable, withdrawn process claims that include all the limitations of the allowable product/apparatus claims should be considered for rejoinder. All claims directed to a nonelected process invention must include all the limitations of an allowable product/apparatus claim for that process invention to be rejoined.
In the event of rejoinder, the requirement for restriction between the product/apparatus claims and the rejoined process claims will be withdrawn, and the rejoined process claims will be fully examined for patentability in accordance with 37 CFR 1.104. Thus, to be allowable, the rejoined claims must meet all criteria for patentability including the requirements of 35 U.S.C. 101, 102, 103 and 112. Until all claims to the elected product/apparatus are found allowable, an otherwise proper restriction requirement between product/apparatus claims and process claims may be maintained. Withdrawn process claims that are not commensurate in scope with an allowable product/apparatus claim will not be rejoined. See MPEP § 821.04. Additionally, in order for rejoinder to occur, applicant is advised that the process claims should be amended during prosecution to require the limitations of the product/apparatus claims. Failure to do so may result in no rejoinder. Further, note that the prohibition against double patenting rejections of 35 U.S.C. 121 does not apply where the restriction requirement is withdrawn by the examiner before the patent issues. See MPEP § 804.01.
Applicant is reminded that upon the cancelation of claims to a non-elected invention, the inventorship must be corrected in compliance with 37 CFR 1.48(a) if one or more of the currently named inventors is no longer an inventor of at least one claim remaining in the application. A request to correct inventorship under 37 CFR 1.48(a) must be accompanied by an application data sheet in accordance with 37 CFR 1.76 that identifies each inventor by his or her legal name and by the processing fee required under 37 CFR 1.17(i).
Allowable Subject Matter
Claims 15 and 17 would be allowable if rewritten to overcome the rejection(s) under 35 U.S.C. 112(b) and 35 U.S.C. 101 set forth in this Office action and to include all of the limitations of the base claim and any intervening claims and if the Examiner’s assumed interpretation set forth below is correct. Specifically regarding the 112(b) rejections, if claims 15 and 17 resolve these including specifying which test results (e.g., first and third specimen results are compared with each other and second and fourth specimens are compared with each other) are being compared. However, due to the indefiniteness, Examiner may perform an updated search following any amendments resolving the indefiniteness issues.
The following is a statement of reasons for the indication of allowable subject matter: based on the arrangement recited in claim 11, Examiner does not find that the prior art teaches or suggests the limitations of removing the segmented rods from the fuel assembly, extracting all four specimens, testing all four specimens to determine the level of embrittlement in each of them, and then comparing the test results of the first & third specimens and comparing the test results of the second & fourth specimens “to determine the effect of irradiation dose and dose rate on material mechanical and microstructural evolution.” However, due to the indefiniteness of the claims, Examiner is not certain that the above interpretation is the intended meaning of claims 15 and 17. Please do not add new matter.
Claim Rejections - 35 USC § 101
35 U.S.C. 101 reads as follows:
Whoever invents or discovers any new and useful process, machine, manufacture, or composition of matter, or any new and useful improvement thereof, may obtain a patent therefor, subject to the conditions and requirements of this title.
Claims 11–20 are rejected under 35 U.S.C. 101 because the claimed invention is directed to an abstract idea without significantly more. The claims recite performing irradiation (claim 11) and then testing specimens to make determinations (dependent claims).. The determinations are not followed by a practical implementation.
Analysis
step 1 — Statutory Category
Claim 11 recites a series of steps, and is therefore a process.
step 2a, prong one — Does the claim recite an abstract idea, law of nature, or natural phenomenon?
Claim 11 recites an abstract idea because it recites a method for arranging test specimens to permit future irradiation. In totality, claim 11 and its dependent claims recite human-performed actions/judgements and basic mathematical operations.
step 2a, prong two — Does the claim recite additional elements that integrate the judicial exception into a practical application?
This judicial exception is not integrated into a practical application because the claim does not include additional elements that are sufficient to amount to significantly more than the judicial exception because all claim elements, both individually and in combination, are directed towards (a) the mathematical manipulation of data on a general purpose computer (e.g., output data comparison, claims 15 and 17) and do not result in an improvement in the functioning of the computer or to another technology, and/or (b) mental processes performed in the human mind such as evaluating irradiation effects (e.g., claims 14-17).
Even though the steps are performed under the umbrella of nuclear reactor technology, the execution of these steps does not result in the improvement of said technology because the only “nuclear”-related aspect of the method is the fact that the cause of the degradation of measured parameters is radiation.
As explained by the Supreme Court, a claim directed to a judicial exception cannot be made eligible "simply by having the applicant acquiesce to limiting the reach of the patent for the formula to a particular technological use." Diamond v. Diehr, 450 U.S. 175, 192 n.14, 209 USPQ 1, 10 n. 14 (1981). Thus, limitations that amount to merely indicating a field of use or technological environment in which to apply a judicial exception do not amount to significantly more than the exception itself, and cannot integrate a judicial exception into a practical application. An example of a practical application of the method might be, following the embrittlement (claim 14), dose and dose rate effects (claims 15, 17), or degradation (claim 16) determinations, to then take this information and shuffle the fuel rods. Such a practical application would mean, for example, that the newer fuel rods are located in areas of highest dose. Another practical application might be to take the information and update the expected operating life of the nuclear reactor or the timeline for scheduled maintenance. These are just standard examples. Please ensure that any practical application inserted into the claims is not new matter.
step 2b — Is there an inventive concept?
There is nothing unconventional about the way the steps are performed in claim 11. The recited steps involve arranging test specimens within a first and second tube such that they are capable of receiving future radiation doses. As such, the specimens within their respective tubes are capable of performing their intended function without specifying any unique approach in doing so. The subsequent comparing steps (dependent claims) appear to be performable on a generic computer, and the subsequent determination steps (dependent claims) appear to also be performable on a generic computer or evaluations made in the human mind. Thus, these elements do not transform the abstract idea into a patent eligible application of the abstract idea.
Claim Rejections - 35 USC § 112
The following is a quotation of the first paragraph of 35 U.S.C. 112(a):
(a) IN GENERAL.—The specification shall contain a written description of the invention, and of the manner and process of making and using it, in such full, clear, concise, and exact terms as to enable any person skilled in the art to which it pertains, or with which it is most nearly connected, to make and use the same, and shall set forth the best mode contemplated by the inventor or joint inventor of carrying out the invention.
Claims 11–20 are rejected under 35 U.S.C. 112(a) as failing to comply with the enablement requirement. The claim(s) contains subject matter which was not described in the specification in such a way as to enable one skilled in the art to which it pertains, or with which it is most nearly connected, to make and/or use the invention. Claim 11 recites that the first and third specimens “receive a first radiation dose” and the second and fourth specimens “receive a second radiation dose that is different from the first radiation dose.” This limitation presents two issues: (1) the skilled artisan would not know how to ensure the first and third specimens received the same radiation dose, and (2) the skilled artisan would not know how to ensure the second radiation dose were different from the first radiation dose. In (1), it is possible that the recited condition may be fulfilled, but it is more likely that it would not be. In (2), it is more likely that the recited condition may be fulfilled, but it may not be. Regarding (1), the claim recites (paraphrased for simplicity by Examiner) that the first and third specimens are at a same axial position but a different lateral position. Because they are laterally spaced apart, the numerical value of the radiation dose of the first specimen is almost certain to be different, even if only moderately so, from the radiation dose of the third specimen. The skilled artisan does not know how to manipulate the relatively chaotic radioactive environment within the operating nuclear reactor in order to ensure two specimens that are in different physical locations, receive the same dose. Regarding (2), the claim recites that the second radiation dose (for the second and fourth specimens) is different from the first radiation dose (for the first and third specimens). The skilled artisan does not know how to manipulate the relatively chaotic radioactive environment within the operating nuclear reactor in order to ensure that the radiation doses are different. The skilled artisan would assume that, on occasion, the doses could be the same.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(a) for its dependency upon an above–rejected claim and for the same reasons.
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.
Claims 11–20 are rejected under 35 U.S.C. 112(b) as being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claim 11 is rejected as being indefinite for reasons following the above enablement rejections. Specifically, regarding (1) above, if a potential infringer performs the recited steps in claim 11, but the first and third specimens do not receive the same radiation dose, it is unclear if he is infringing on the claimed invention. Similarly, regarding (2) above, if a potential infringer performs the recited steps in claim 11, but the first and second radiation doses are the same, it is unclear if he is infringing on the claimed invention. Further, because the two above-identified outcomes are conditional, the metes and bounds of the claim are unclear.
Claims 15 and 17 recite the limitation comparing "the test results". There is insufficient antecedent basis for this limitation in the claim. Specifically, the parent claims recite four separate steps of testing, and it is unclear which test result(s) are being compared to which other test result(s) (e.g., is the result of specimen 1 compared to specimen 3, or what?), and it is further unclear which “test results” are referred to—for example, specimens 1 and 3 are compared, 2 and 4 are compared, 1 and 2 are compared, and 3 and 4 are compared, which of these “test results” are being referred to in claims 15 and 17? All of them, or a subset, or something else?
Claim 16 recites “further comprising testing the first, second, third, and fourth test specimens.” There is insufficient antecedent basis for this limitation in the claim. Specifically, the parent claim also recites “further comprising testing the first, second, third, and fourth test specimens.” Therefore, it is unclear if the testing of claim 16 is distinct from, or the same as, that of parent claim 13.
Any claim not specifically addressed in this section that depends from a rejected claim is also rejected under 35 U.S.C. 112(b) for its dependency upon an above–rejected claim and for the same reasons.
The following is a quotation of 35 U.S.C. 112(d):
(d) REFERENCE IN DEPENDENT FORMS.—Subject to subsection (e), a claim in dependent form shall contain a reference to a claim previously set forth and then specify a further limitation of the subject matter claimed. A claim in dependent form shall be construed to incorporate by reference all the limitations of the claim to which it refers.
Claims 14-17 are rejected under 35 U.S.C. 112(d) as being of improper dependent form for failing to further limit the subject matter of the claim upon which it depends, or for failing to include all the limitations of the claim upon which it depends. Each of claims 14-17 requires irradiation to have occurred in order for their recited steps to be performed. However, claim 11 does not actually recite a step of irradiation. Instead, claim 11 merely recites, in its final clause, that the rods with their specimens are left in a fuel assembly such that they are capable of receiving radiation. Applicant may overcome these rejections by actively reciting the step of irradiation in claim 11. Alternatively, Applicant may cancel the claim(s), amend the claim(s) to place the claim(s) in proper dependent form, rewrite the claim(s) in independent form, or present a sufficient showing that the dependent claim(s) complies with the statutory requirements.
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 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.
For Applicant’s benefit, portions of the cited reference(s) have been cited to aid in the review of the rejection(s). While every attempt has been made to be thorough and consistent within the rejection, it is noted that the prior art must be considered in its entirety, including disclosures that teach away from the claims. See MPEP 2141.02 VI.
The following is a quotation of 35 U.S.C. 103 which forms the basis for all obviousness rejections set forth in this Office action:
A patent for a claimed invention may not be obtained, notwithstanding that the claimed invention is not identically disclosed as set forth in section 102 of this title, if the differences between the claimed invention and the prior art are such that the claimed invention as a whole would have been obvious before the effective filing date of the claimed invention to a person having ordinary skill in the art to which the claimed invention pertains. Patentability shall not be negated by the manner in which the invention was made.
The factual inquiries set forth in Graham v. John Deere Co., 383 U.S. 1, 148 USPQ 459 (1966), that are applied for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 11, 13, and 18–20 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann (US 2024/0006091) in view of Heibel (US 8,681,920).
Regarding claim 11, Hartmann discloses a method of irradiating a plurality of test specimens within a nuclear reactor, the nuclear reactor including a fuel assembly (1) comprising a first tube and a second tube (two tubes 28, Fig. 2), the method comprising: placing a first segmented rod (see containers 32 connected at portions 34b) at least partially within the first tube of the fuel assembly of the nuclear reactor, the first segmented rod comprising a first test specimen and a second test specimen spaced apart from the first test specimen (containers 32 may be filled with different material specimens, e.g., ¶ 98); positioning the first segmented rod relative to the first tube such that the first test specimen is positioned at a first axial elevation (e.g., within the uppermost container 32) relative to the fuel assembly and such that the second test specimen is positioned at a second axial elevation relative (e.g., within the lowermost container 32) to the fuel assembly, the first axial elevation is different than the second axial elevation; placing a second segmented rod (see another set of containers 32 connected at portions 34b) at least partially within the second tube of the fuel assembly of the nuclear reactor, the second segmented rod comprising a third test specimen (e.g., within the uppermost container 32) and a fourth test specimen (e.g., within the lowermost container 32) spaced apart from the third test specimen; positioning the second segmented rod relative to the second tube such that the third test specimen is positioned at the first axial elevation and such that the fourth test specimen is positioned at the second axial elevation (as described above); and leaving the first segmented rod and the second segmented rod in residence within the fuel assembly for a period of time such that the first test specimen and the third test specimen receive a first radiation dose (since they are side-by-side, it is technically possible that the materials within the above-cited adjacent uppermost containers 32 may receive the same radiation dose as each other), and such that the second test specimen and the fourth test specimen receive a second radiation dose that is different than the first radiation dose (presumably, the materials within the uppermost containers 32 may receive a radiation dose different from the materials within the lowermost containers 32).
Hartmann’s tubes in which the test specimens are inserted are control tubes, not instrumentation tubes. Nuclear reactors have control tubes as well as instrumentation tubes extending into the fuel assemblies. Typically, “instrumentation” such as sensors are inserted into the instrumentation tubes, while neutron-absorbing material is used in the control tubes.
Heibel does teach using instrumentation tubes for insertion of irradiation materials. Heibel is in the same art area of nuclear reactors (abstract) and teaches (Figs. 2 and 3) inserting multiple adjacent elements (within adjacent tubes 14) within instrumentation tubes (16). A purpose for this teaching is, as described by Heibel (abstract), “for monitoring a parameter in an irradiated environment and communicating a signal representative of the monitored parameter to a less caustic environment that employs a wireless transmitter that is powered by the irradiated environment.” The skilled artisan would appreciate that any leftover neutron-absorbing material in the control apparatus of Hartmann may interfere with Heibel’s benefit of having their parameter-measuring devices to be self-powered by radiation. Moreover, Examiner notes that it is known in the art for capsules to be inserted into control rod spiders as well as instrumentation tubes. It would have been an obvious matter of design choice for the skilled artisan to have picked one over the other, depending on the specific parameters of the reactor and outcomes desired.
The combination of the use of instrumentation tubes of Heibel in lieu of the control tubes of Hartmann would have produced adjacent instrumentation tubes having adjacent axially separated specimen containers, i.e., Applicant's claimed invention.
This combination would have been obvious to one having ordinary skill in the art before the effective filing date of the invention, as it produces no unexpected results. In view of the prior art teachings of Hartmann, a person of ordinary skill would have predicted that combining Heibel’s choice to use instrumentation tubes with Hartmann's adjacent tube design would have produced Applicant's claimed invention of adjacent instrumentation tubes having adjacent axially separated specimen containers. The skilled person’s motivation for the combination would have been the expectation of, as described by Heibel (abstract), “for monitoring a parameter in an irradiated environment and communicating a signal representative of the monitored parameter to a less caustic environment that employs a wireless transmitter that is powered by the irradiated environment.” The skilled artisan would appreciate that any leftover neutron-absorbing material in the control apparatus of Hartmann may interfere with Heibel’s benefit of having their parameter-measuring devices to be self-powered by radiation.
Regarding claim 13, modified Hartmann teaches all the elements of the parent claim and Hartmann further discloses removing the first and second segmented rods from the fuel assembly and extracting the first, second, third, and fourth test specimens from their respective segmented rod (“… the rods 30 are removed from the fuel assembly 1, and rods are opened or cut into segments …. Then, the material to be activated is removed and further treated, for example physically or chemically. In other embodiments, the nuclides may be separated,” ¶ 111).
Regarding claims 18–20, modified Hartmann teaches all the elements of the parent claim and Hartmann further discloses wherein the first test specimen and the second test specimen comprise a first material, wherein the third test specimen and the fourth test specimen comprise a second material, and wherein the first material and the second material are different (“Each container may include a different material,” ¶ 83); the first test specimen comprise a first material, the second test specimen comprises a second material, the third test specimen comprises a third material, and the fourth test specimen comprises a fourth material, and wherein the first material and the third material are different (“Each container may include a different material,” ¶ 83); and the second material and the fourth material are different (“Each container may include a different material,” ¶ 83).
Claim 12 is rejected under 35 U.S.C. 103 as being unpatentable over Hartmann in view of Heibel, as described above, further in view of Diaz (US 5,386,442).
Regarding claim 12, modified Hartmann teaches all the elements of the parent claim and further that the specimen has a geometry (implicit) but does not specify one of the claimed geometries. Diaz does. Diaz is also in the art area of nuclear reactors (abstract) and teaches a test specimen that comprises a test specimen geometry, and wherein the test specimen geometry comprises a tensile pull bar, a bend bar, a compact tension specimen (“The DCB [specimen] geometry may vary in length and cross section depending upon the physical restrictions of a particular application. In the extreme, the invention may also be applied to a short stiff fracture specimen such as a compact tension ("CT") specimen,” col. 2, ll. 51-55), a TEM disk specimen, or a combination thereof. The skilled artisan would have been motivated, prior to the effective filing date of the invention, to have utilized the compact tension specimen suggested by Diaz within the apparatus of modified Hartmann in order to, as explained by Diaz (col. 2, ll. 51-55 and claim 20), to work in applications with “physical restrictions” such as for “monitoring crack growth in a … piping of a nuclear reactor.” Examiner notes that both Hartmann and Heibel’s specimens are inserted into piping of a nuclear reactor.
Claims 14 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Hartmann in view of Heibel, as described above, further in view of Yang1 (CN 111816334 A).
Regarding claims 14 and 16, modified Hartmann teaches all the elements of the parent claim but does not explicitly teach the claimed testing.
Yang does. Yang is also in the art area of nuclear reactors and teaches testing the first, second, third, and fourth specimens to determine the level of embrittlement and degradation of each of the first, second, third, and fourth test specimens (Yang, page 2, teaches an “irradiation monitoring tube, to monitor … the irradiation embrittlement condition” of any welds in said tube … then using [this information for] material irradiation embrittlement evaluation”). Examiner notes that both Hartmann and Heibel’s specimens are inserted into piping (aka tubes) of a nuclear reactor. The skilled artisan would have been motivated, prior to the effective filing date of the invention, to have utilized the embrittlement/degradation monitoring suggested by Yang within the apparatus of modified Hartmann in order to, as explained by Yang (page 2), to monitor the conditions of the welds within the pipes in nuclear reactors. It is extremely well-known in the art that the pipes used in nuclear reactors are subject to extreme levels of radiation and harsh environments, and all commercial nuclear reactors monitor the material degradation in their piping. Examiner further notes that Yang’s evaluation of embrittlement also necessarily includes an evaluation of degradation because embrittlement is a type of degradation.
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to LILY C GARNER whose telephone number is (571)272-9587. The examiner can normally be reached 9-5 CT.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jack Keith can be reached at (571) 272-6878. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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LILY CRABTREE GARNER
Primary Examiner
Art Unit 3646
/LILY C GARNER/Primary Examiner, Art Unit 3646
1 see attached 12-page foreign reference with highlights.
Prosecution Insights