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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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, and 35-38 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 composition meets the claimed limitation of “low performance” since the same ingredients are used. The reaction velocity does not limit the claimed composition 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”, “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 ratio since all three ingredients are disclosed and thus a ration can be determined.
Claims 6, 7, 14, 28-31, and 35-38 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 composition meets the claimed limitation of “low performance” since the same ingredients are used. The reaction velocity does not limit the claimed composition. 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”, “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 ratio since all three ingredients are disclosed and thus a ration 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 35-38 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 composition meets the claimed limitation of “low performance” since the same ingredients are used. The reaction velocity does not limit the claimed composition. 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”, “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 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 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.
Claims 6-7,14,17-19, 28-31, and 35-38 are 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. The term “low performance” in the claims is a relative term which renders the claim indefinite. The term “low performance” is not defined by the claim, the specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. 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 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.
The arguments with respect to the terms “low performance” and reaction velocity have been addressed above. Further, since the term is indefinite, the prior art meets the limitation by the disclosure of the same ingredients. The specification does not provide a standard for ascertaining the requisite degree, and one of ordinary skill in the art would not be reasonably apprised of the scope of the invention.
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).
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.
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/AILEEN B FELTON/Primary Examiner, Art Unit 1734