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 .
Continued Examination Under 37 CFR 1.114
A request for continued examination under 37 CFR 1.114, including the fee set forth in 37 CFR 1.17(e), was filed in this application after final rejection. Since this application is eligible for continued examination under 37 CFR 1.114, and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114. Applicant's submission has been entered.
Claim Rejections - 35 USC § 102
The following is a quotation of the appropriate paragraphs of 35 U.S.C. 102 that form the basis for the rejections under this section made in this Office action:
A person shall be entitled to a patent unless –
(a)(1) the claimed invention was patented, described in a printed publication, or in public use, on sale, or otherwise available to the public before the effective filing date of the claimed invention.
Claims 6, 7, 14, 17, 28-31, 35-37, and 39-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Yamazaki (20040100079).
Regarding claims 6, 7, 14, and 17, Yamazaki discloses an explosive apparatus i.e. hybrid inflator that includes HMX (explosive powder), polyurethane (polymer resin), and silica (inert filler) (0051, 0052, 0058, and fig. 1). The reaction velocity does not limit the claimed composition. The reaction velocity is less than 6 km/s since the composition has a reaction velocity of zero before ignition. Ignition and detonation are method limitations in a composition claim. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (i.e. “such that”, “preconfigured to”, “configured to”, etc.). These clauses are essentially method limitations or statements of intended or desired use and do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647. The reaction velocity is an inherent property of the composition since the same claimed ingredients are used. As to limitations which are considered to be inherent in a reference, note the case law of In re Ludke, 169 USPQ 563; In re Swinehart, 169 USPQ 226, In re Fitzgerald, 205 USPQ 594; In re Best et al, 195 USPQ 430; and In re Brown, 173 USPQ 685, 688. The prior art references will inherently possess a “particular morphology” because they have a size and shape. They also inherently possess a “powder size distribution” because they have a size. The prior art compositions also will have a “particular ratio” since all three ingredients are disclosed and thus a ration can be determined.
Claims 6, 7, 14, 28-31, 35-37, and 39-41 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Taylor (6689236).
Regarding claims 6, 7, 14, Taylor discloses an explosive apparatus i.e. hybrid inflator(col. 1, lines 5-15) that includes HMX (explosive powder)(col. 5, lines 1-5), polyurethane (polymer resin)(col. 4, lines 25-35), and calcium carbonate or magnesium carbonate (both are notoriously well-known inert fillers) (col. 5, lines 45-55). The reaction velocity does not limit the claimed composition. The reaction velocity is less than 6 km/s since the composition has a reaction velocity of zero before ignition. Ignition and detonation are method limitations in a composition claim. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (i.e. “such that”, “preconfigured to”, etc.). These clauses are essentially method limitations or statements of intended or desired use and do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647. The reaction velocity is an inherent property of the composition since the same claimed ingredients are used. As to limitations which are considered to be inherent in a reference, note the case law of In re Ludke, 169 USPQ 563; In re Swinehart, 169 USPQ 226, In re Fitzgerald, 205 USPQ 594; In re Best et al, 195 USPQ 430; and In re Brown, 173 USPQ 685, 688. The prior art references will inherently possess a “particular morphology” because they have a size and shape. They also inherently possess a “powder size distribution” because they have a size. The prior art compositions also will have a “particular ratio” since all three ingredients are disclosed and thus a ratio can be determined.
Claim Rejections - 35 USC § 103
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, 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.
Claims 6, 7, 14, 18, 28-31, and 35-39 are rejected under 35 U.S.C. 103 as being unpatentable over Taylor (6689236).
Regarding claims 6, 7, 14, and 18, Taylor discloses an explosive apparatus i.e. hybrid inflator(col. 1, lines 5-15) that includes HMX (explosive powder)(col. 5, lines 1-5), polyurethane (polymer resin)(col. 4, lines 25-35), and hydrophobic silica (inert filler) (col. 2, lines 15-25). The reaction velocity does not limit the claimed composition. The reaction velocity is less than 6 km/s since the composition has a reaction velocity of zero before ignition. Ignition and detonation are method limitations in a composition claim. Language that suggests or makes optional but does not require steps to be performed or does not limit a claim to a particular structure does not limit the scope of a claim or claim limitation (i.e. “such that”, “preconfigured to”, etc.). These clauses are essentially method limitations or statements of intended or desired use and do not serve to patentably distinguish the claimed structure over that of the reference. See In re Pearson, 181 USPQ 641; In re Yanush, 177 USPQ 705; In re Finsterwalder, 168 USPQ 530; In re Casey, 512 USPQ 235; In re Otto, 136 USPQ 458; Ex parte Masham, 2 USPQ 2nd 1647. The reaction velocity is an inherent property of the composition since the same claimed ingredients are used. As to limitations which are considered to be inherent in a reference, note the case law of In re Ludke, 169 USPQ 563; In re Swinehart, 169 USPQ 226, In re Fitzgerald, 205 USPQ 594; In re Best et al, 195 USPQ 430; and In re Brown, 173 USPQ 685, 688. The prior art references will inherently possess a “particular morphology” because they have a size and shape. They also inherently possess a “powder size distribution” because they have a size. The prior art compositions also will have a ratio since all three ingredients are disclosed and thus a ration can be determined.
It would have been obvious to one having ordinary skill in the art at the time the invention was made and/or filed to use the silica as taught by the prior art disclosure portion of the reference since it indicates that the inclusion will alleviate the sticking phenomena which results in improved performance.
Claim 19 is rejected under 35 U.S.C. 103 as being unpatentable over either Yamazaki (20040100079) or Taylor (6689236) as applied above and further in view of Sidebottom (3883373).
Sidebotton discloses the use of precipitated silica (claim 2) as a filler in an energetic composition.
It would have been obvious to one having ordinary skill in the art at the time the invention was made and/or filed to use filler as taught by Sidebottom with either composition of Yamazaki or Taylor since both compositions disclose the sue of a filler and since Sidebottom teaches precipitated silica as a filler in an energetic composition.
Claim 18 is rejected under 35 U.S.C. 103 as being unpatentable over the French patent (FR 3051188) as applied above and further in view of Yamazaki (20040100079).
Yamazaki discloses an explosive apparatus i.e. hybrid inflator that includes HMX (explosive powder), polyurethane (polymer resin), and silica (inert filler) (0051, 0052, 0058, and fig. 1).
It would have been obvious to one having ordinary skill in the art at the time the invention was made and/or filed to use filler as taught by Yamazaki with the composition disclosed by the French patent since both compositions disclose the use of an inert filler and since Yamazaki teaches silica as a filler in an energetic composition.
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.
The following is a quotation of the first paragraph of pre-AIA 35 U.S.C. 112:
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 of carrying out his invention.
Claims 6-7, 14, 17-19, 28-31, 35-37 and 39-41 are rejected under 35 U.S.C. 112(a) or 35 U.S.C. 112 (pre-AIA ), first paragraph, 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. The claims recite specific reaction velocity that is achieved upon detonation but does not claim the particular details to achieve this result. The claims are very broad in scope, the level of one of ordinary skill is high but the art is very complex in nature, level of predictability in the art is low relating to the reactive nature of explosives, and a large quantity of experimentation would be needed to make or use the invention based on the content of the disclosure. The prior art is evidence of the broad nature of the claims as well as the excessive amount of experimentation that would have to be used. It is alleged that the prior art compositions do not have the claimed reaction velocity yet they recite the same ingredients. There is no way for one of skill in the art to distinguish between these compositions nor is there a way to determine which compositions meet this limitation.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues the reaction velocity. These arguments are not persuasive. There is no evidence provided which shows that the prior art will not have the same claimed reaction velocity. The same claimed ingredients are used as that which are claimed. Applicant argues that the reaction velocity is not a method limitation. The Examiner disagrees. The claims are drawn to a composition and do not possess any reaction velocity until ignited. The ignition is a method of using the composition and does not limit the composition claim. The composition has a reaction velocity of zero prior to ignition. The claims recite less than 4 km/s and less than 6 km/s which includes zero.
The prior art references will inherently possess a “particular morphology” because they have a size and shape. They also inherently possess a “powder size distribution” because they have a size. The prior art compositions also will have a ratio since all three ingredients are disclosed and thus a ratio can be determined.
In response to applicant's argument that the references fail to show certain features of the invention, it is noted that the features upon which applicant relies are not recited in the rejected claim(s). Although the claims are interpreted in light of the specification, limitations from the specification are not read into the claims. See In re Van Geuns, 988 F.2d 1181, 26 USPQ2d 1057 (Fed. Cir. 1993).
In response to applicant's argument that the coompoistion has a certain reaction velocity, the fact that the inventor has recognized another advantage which would flow naturally from following the suggestion of the prior art cannot be the basis for patentability when the differences would otherwise be obvious. See Ex parte Obiaya, 227 USPQ 58, 60 (Bd. Pat. App. & Inter. 1985).
In response to applicant's arguments against the references individually, one cannot show nonobviousness by attacking references individually where the rejections are based on combinations of references. See In re Keller, 642 F.2d 413, 208 USPQ 871 (CCPA 1981); In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to AILEEN BAKER FELTON whose telephone number is (571)272-6875. The examiner can normally be reached Monday 9-5:30, Thursday 11-3, Friday 9-5:30.
Examiner interviews are available via telephone, in-person, and video conferencing using a USPTO supplied web-based collaboration tool. To schedule an interview, applicant is encouraged to use the USPTO Automated Interview Request (AIR) at http://www.uspto.gov/interviewpractice.
If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached on 571-272-1177. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/AILEEN B FELTON/Primary Examiner, Art Unit 1734
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