Application of Borst

• Decision Date: 01 July 1965
• Docket Number: Patent Appeal No. 7316.
• Parties: Application of Lyle B. BORST.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

345 F.2d 851 (1965)

Application of Lyle B. BORST.

Patent Appeal No. 7316.

United States Court of Customs and Patent Appeals.

May 27, 1965.

Rehearing Denied July 1, 1965.

Richard Whiting, Washington, D. C. (James B. Vander Kelen, Midland, Mich., William H. Davis, Joseph D. Lazar, New York City, of counsel), for appellant.

Clarence W. Moore, Washington, D. C. (Raymond E. Martin, Washington, D. C., of counsel), for the Commissioner.

Before WORLEY, Chief Judge, and RICH, MARTIN, SMITH, and ALMOND, Judges.

SMITH, Judge.

The invention for which appellant seeks a patent comprises means for safely and effectively controlling a relatively large neutron output by varying a small and easily controlled neutron input source. The application, serial No. 654,837, filed April 24, 1957, is aptly titled "Neutron Amplifier." Claim 27 is illustrative of appealed claims 27-33 and reads:

"27. A subcritical neutron amplifier having a controllable neutron source and, associated with said source in cascade, an input region of neutron moderator material in which neutrons of epithermal energy from the source are moderated to thermal energy levels, a sequent fuel region containing neutron fissionable material in mass concentration and geometric configuration adapted to augment the neutron flow by a subcritical reaction, and an output region comprising a thermal neutron barrier substantially opaque to thermal neutrons but transmissive to epithermal neutrons, whereby an amplified neutron output is subcritically produced."

Claims 30, 31 and 32 are quite similar to claim 27 and need not be separately discussed. Claim 28 is dependent upon claim 27 and calls for means to vary the transparency¹ of the neutron barrier. Claim 29 further provides that the transparency-varying means of claim 28 be such that the neutron flow may be modulated as a function of time. Claim 33 adds to claim 32 the limitation that the fuel be in an hydrogenous environment.

In the embodiment illustrated and described in appellant's application, the amplifier employs a Van de Graff accelerator as a source supplying neutrons to an initial stage composed of three regions or zones. The first of these, the input or moderator region, retards the speed of the neutrons entering from the source so that only thermal (low-energy) neutrons are passed to the second region. The second, or fuel region, consists of fissionable material, such as uranium or a water solution of uranyl nitrate, which is responsive to the entering thermal neutrons to effect fission by which more epithermal (high-energy) neutrons are evolved. The second region is not of crtical mass and thus by design it is incapable of exploding while producing neutrons. The third region is a neutron barrier which functions to prevent transmission of thermal neutrons to the moderator region of the next succeeding stage, and allows only epithermal neutrons to pass.

This third region may be provided with means to vary its transparency by a shutter-like array of cadmium strips adjusted to provide feedback control. In addition, the transparency-varying means may be provided with means responsive to a time-varying function so that the feedback neutron flow may be modulated as a function of time. It is also disclosed that a number of such amplifier stages may be cascaded to any given degree of neutron flux enhancement.

Appellant asserts that the claimed invention affords a revolutionary approach to the safety problem in the nuclear reactor art. As the amplifier is said to be inherently safe from divergent nuclear chain reaction, the intricate systems needed to monitor and control the operation of conventional neutron amplifiers to prevent an explosion are unnecessary.

The single reference relied upon by the Patent Office in rejecting the appealed claims is an Atomic Energy Commission document entitled "KAPL-M-RWS-1, A Stable Fission Pile with High Speed Control." The document is in the form of an unpublished memorandum authored by one Samsel, and will hereinafter be referred to as "Samsel." Samsel is dated February 14, 1947 and was classified as a secret document by the Commission until March 9, 1957, when it was declassified. In essence, Samsel sets forth and discusses the problems present in the control of a nuclear reactor, the concept of use of successive fuel stages to effect such control, and a description of the arrangement, composition and relative proportions of materials required to obtain the sought-for results. Samsel is prefaced by a statement that it was made to record an idea, and it nowhere indicates that the idea had been tested in an operating reactor.

The Patent Office does not invoke Samsel as a publication (which it apparently was not, at any pertinent date). Rather, the contention is that Samsel constitutes evidence of prior knowledge within the meaning of 35 U.S.C. § 102(a).

While there seems to be some disagreement on the part of the solicitor, we think the most reasonable interpretation of the examiner's rejection, and one which is concurred in by the board and by appellant, is that claims 27, 30, 31 and 32 are fully met by Samsel and thus the subject matter defined therein is unpatentable because it was known by another in this country prior to appellant's invention thereof. As to claims 28, 29 and 33, even though not fully met by Samsel, they are said to be obvious within the meaning of 35 U.S.C. § 103 in view of the prior knowledge evidenced by Samsel.

Our own independent consideration of Samsel has convinced us that it contains adequate enabling disclosure of the invention of claims 27 and 30-32, see In re Sheppard, 339 F.2d 238, 52 CCPA 859, and In re LeGrice, 301 F.2d 929, 49 CCPA 1124, and appellant does not appear to contend otherwise.² Rather, appellant contends that Samsel is not available as evidence of prior knowledge under sections 102(a) and 103. Appellant also argues that, even if Samsel is available, the subject matter of claims 28, 29 and 33 is not obvious in view thereof. We agree with this characterization of the essential issues presented on this appeal, and will treat them in the order stated above.

In the case of In re Schlittler, 234 F.2d 882, 43 CCPA 986, this court was presented with the following situation: A manuscript containing an anticipatory disclosure of the appellants' claimed invention had been submitted to The Journal of the American Chemical Society and was later published. The date to which the appellants' application was entitled for purposes of constructive reduction to practice was earlier than the publication date of the Journal article, and therefore the Patent Office did not contend that the "printed publication" portion of section 102(a) was applicable. However, the manuscript bore a notation that it had been received by the publisher on a date prior to the effective filing date of the appellants' application. On the basis of this notation the Patent Office argued that the article constituted sufficient evidence of prior knowledge under section 102(a).

After an exhaustive review of the authorities, and of the legislative history of the Patent Act of 1952, this court rejected the contention of the Patent Office, and concluded that such a document was not proper evidence of prior knowledge. In reversing, the court stated (234 F.2d at 886, 433 CCPA at 992):

"In our opinion, one of the essential elements of the word `known\' as used in 35 U.S.C. § 102(a) is knowledge of an invention which has been completed by reduction to practice, actual or constructive, and is not satisfied by disclosure of a conception only."

And therefore, since the Journal article, "at best, could be evidence of nothing more than conception and disclosure of the invention," the

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