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 .
Response to Amendment
This is the response to amendment filed 07/23/2025 for application 17408798.
Claims 1-5, 7-14, 16, 23-31, and 33-35 are currently pending and have been fully considered.
Claims 6, 15, 17-22, 32 and 36 have been cancelled.
The 35 USC 112 rejections of claims 1-5, 7-10, 23-31, and 33 have been withdrawn in light of applicant’s amendment.
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 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.
The factual inquiries 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.
Claim(s) 1-5, 7, 11, 12, 14, 16, 23-31, and 33-35 are rejected under 35 U.S.C. 103 as being unpatentable over DING (CN101531556) in view of the machine translation of DING.
DING will hereafter be referring to the google machine translation of DING.
Regarding claim 1, DING teaches in the abstract a method for granulating amorphous boron powder.
The process comprises the following steps:
1) mixing ethyl acetate with isocyanate powder, a liquid polyurethane bonder pre-former, and a curing catalyst uniformly to form a premix.
2) adding amorphous boron powder (fuel material) to said premix to mix.
The ethyl acetate is taught to be used as a solvent. (combining the fuel material, a solvent and an isocyanate to form a solution)
Although DING does not use the term “passivating,” DING recognizes the challenges of using boron powder as fuel in paragraphs 3 and 4 and 6.
DING states that performance of the amorphous boron power deteriorates due to crosslinking and that it is a goal to produce easy to control, high-rate products.
One of ordinary skill in the art would recognize that the goals would include reducing the crosslinking or passivating the amorphous boron.
Furthermore, DING teaches in paragraph 12 that the isocyanate includes isophorone diisocyanate (IPDI).
IPDI is the compound that is currently claimed to be used as the isocyanate passivation agent.
Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
The liquid polyurethane bonder may be construed as the at least one binder.
The liquid polyurethane bonder pre-former is taught in paragraph 12 to be terminal hydroxylpolybutadiene (HTPB) or polyethylene glycol-tetrahydrofuran copolymer (PET).
The specification of the present application and present claim 3 of the present application states that the binder is hydroxyl-terminated polybutadiene.
Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
DING explicitly teaches an embodiment 3 in paragraphs 50-51 that uses IPDI and HTPB.
The curing catalyst and/or the curing agent may be construed as the curing agent.
Although present claim 1 of the current application states “after forming the passivated fuel material, combining the passivated fuel material with at least one binder to form a mixture,” it has been established that (selection of any order of performing process steps is prima facie obvious in the absence of new or unexpected results); In re Gibson, 39 F.2d 975, 5 USPQ 230 (CCPA 1930) (Selection of any order of mixing ingredients is prima facie obvious.
The ratio of components that are used in DING are taught in paragraphs 9 and 10.
The ratio of ethyl acetate to liquid polyurethane bonder pre-polymer to isocyanate curing agent to curing catalyst is 40 to 50: 8 to 9: 1 to 2: 0.1 to 0.05 respectively. The amount of amorphous boron is taught to be 10 to 13 times that of the polyurethane bonder pre-polymer.
The ratio of amorphous boron to ethyl acetate to liquid polyurethane bonder pre-polymer to isocyanate curing agent to curing catalyst is 80 to 117: 40 to 50: 8 to 9: 1 to 2: 0.1 to 0.05.
The isocyanate curing agent is taught in paragraph 12 to include IPDI.
The ratio of amorphous born to the isocyanate curing agent would be expected to be 80 to 117: 1 to 2.
The amount of amorphous boron over the combination of amorphous boron and ethyl acetate and liquid polyurethane bonder pre-polymer and isocyanate curing agent and curing catalyst would be 80 to 117 over 129.1 to 178.05.
Given that the present specification teaches in examples 1 and 2 of paragraphs 84 and 85 the conditions to produce the claimed fuel material, the amounts used in DING would be expected to produce a fuel material with passivated boron of at least 40%.
In the case where the claimed ranges "overlap or lie inside ranges disclosed by the prior art" a prima facie case of obviousness exists. In re Wertheim, 541 F.2d 257, 191 USPQ 90 (CCPA 1976); In re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990).
Regarding claim 11, DING teaches in the abstract a method for granulating amorphous boron powder.
The process comprises the following steps:
1) mixing ethyl acetate with isocyanate powder, a liquid polyurethane bonder, and a curing catalyst uniformly to form a premix,
2) adding amorphous boron powder (fuel material) to said premix to mix.
The ethyl acetate is taught to be used as a solvent. (combining the fuel material, a solvent and an isocyanate to form a solution)
The temperature is taught in paragraph 22 to be heated to about 35-40°C.
The ethyl acetate is volatilized afterwards.
Although DING does not explicitly use the term “passivating,” DING recognizes the challenges of using boron powder as fuel in paragraphs 3, 4 and 6.
DING states that performance of the amorphous boron power deteriorates due to crosslinking and that it is a goal to produce easy to control, high-rate products.
One of ordinary skill in the art would recognize that the goals would include reducing the crosslinking or passivating the amorphous boron.
Furthermore, DING teaches in paragraph 12 that the isocyanate includes isophorone diisocyanate (IPDI).
IPDI is the compound that is currently claimed to be used as the isocyanate passivation agent.
Products of identical chemical composition cannot have mutually exclusive properties." In re Spada, 911 F.2d 705, 709, 15 USPQ2d 1655, 1658 (Fed. Cir. 1990). A chemical composition and its properties are inseparable. Therefore, if the prior art teaches the identical chemical structure, the properties applicant discloses and/or claims are necessarily present. Id.
Regarding claim 11, DING teaches in paragraphs 22 and 28 ethyl acetate, polyurethane bonder pre-polymer, isocyanate curing agent and a curing catalyst are added to a vertical kneader for kneading pot. (reactor) Amorphous boron is then taught in paragraphs 10, 13, and 28 to be added batchwise.
One of ordinary skill in the art would operate the addition batchwise giving that amorphous boron is added batchwise.
Regarding claims 11 and 26, the ratio of components that are used in DING are taught in paragraphs 9 and 10.
The ratio of ethyl acetate to liquid polyurethane bonder pre-polymer to isocyanate curing agent to curing catalyst is 40 to 50: 8 to 9: 1 to 2: 0.1 to 0.05 respectively. The amount of amorphous boron is taught to be 10 to 13 times that of the polyurethane bonder pre-polymer.
The ratio of amorphous boron to ethyl acetate to liquid polyurethane bonder pre-polymer to isocyanate curing agent to curing catalyst is 80 to 117: 40 to 50: 8 to 9: 1 to 2: 0.1 to 0.05.
The isocyanate curing agent is taught in paragraph 12 to include IPDI.
The ratio of amorphous born to the isocyanate curing agent would be expected to be 80 to 117: 1 to 2.
Generally, differences in concentration or temperature will not support the patentability of subject matter encompassed by the prior art unless there is evidence indicating such concentration or temperature is critical.
Regarding claim 2, DING teaches amorphous boron that is treated with the same compounds that is presently claimed and would be expected to be passivated.
Regarding claims 3 and 34, DING teaches in paragraph 12 that the isocyanate includes isophorone diisocyanate (IPDI).
Regarding claim 4, DING teaches in paragraph 12 that the liquid polyurethane includes terminal hydroxyl polybutadiene (HTPB).
Regarding claim 5, DING teaches in paragraph 12 that the isocyanate includes isophorone diisocyanate (IPDI).
It would be well within one of ordinary skill in the art to add the isophorone diisocyanate in multiple steps.
Regarding claim 23, DING teaches in paragraph 25 that after the process, the solvent is volatilized.
Regarding claim 31, DING teaches amorphous boron. DING teaches in paragraph 12 that the isocyanate includes isophorone diisocyanate (IPDI).
Regarding claim 33, DING teaches in paragraph 4 that coating boron to enhance process performance and combustion performance is known in the art. One example of an improving agent includes a toluene diisocyanate.
It would be obvious to one of ordinary skill in the art to form a coating as part of the process to improve the process performance and combustion performance of the boron.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Regarding claim 30, DING explicitly teaches isophorone diisocyanate.
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406
595
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DING teaches a process that is substantially similar to the one that is currently claimed and would be expected to from the same passivated fuel material.
Regarding claims 7, 16 and 27, isophorone diisocyanate with boron would be expected to form the following compound:
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451
512
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which comprises nitrogen-boron bonds.
Regarding claims 28 and 29, isophorone diisocyanate with boron would be expected to form the following compound:
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451
512
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Greyscale
which comprises nitrogen atom bonded to 2 boron atoms.
Regarding claims 14 and 25, isophorone diisocyanate with boron would be expected to form the following compound:
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451
512
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Greyscale
which comprises boron with oxygen in double bonds.
Regarding claims 12 and 24, DING teaches in paragraph 19 that the amorphous boron powder particles have sizes of less than 50 mesh.
Regarding claim 35, DING teaches in paragraph 4 that coating boron to enhance process performance and combustion performance is known in the art. One example of an improving agent includes a toluene diisocyanate.
It would be obvious to one of ordinary skill in the art to form a coating as part of the process to improve the process performance and combustion performance if the boron.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Claim(s) 10 and 13 are rejected under 35 U.S.C. 103 as being unpatentable over DING (CN101531556) in view of the machine translation of DING as applied to claims 1-5, 7, 11, 12, 14, 16, 23-31, and 33-35 above, and further in view of NIEDER (US 4637847).
The above discussion of DING is incorporated herein by reference.
DING does not explicitly teach the solvent may be different than ethyl acetate.
However, NIEDER teaches a method of chemical passivation of amorphous boron that comprises treating amorphous boron with an alcohol but first placing the amorphous boron in a solvent.
The solvent is taught in lines 23-44 of column 2 to include acetone.
It would be obvious to one of ordinary skill in the art to substitute acetone as the solvent in the process that DING teaches with an expectation of success as amorphous boron is taught to be usable with acetone as the solvent.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Claim(s) 8-9 are rejected under 35 U.S.C. 103 as being unpatentable over DING (CN101531556) in view of the machine translation of DING as applied to claims 1-5, 7, 11, 12, 14, 16, 23-31, and 33-35 above, and further in view of DEHM (US 3790416).
The above discussion of DING is incorporated herein by reference.
DING does not explicitly teach the addition of a plasticizer.
However, DING teaches in paragraph 38 that the amorphous boron powder may be applied to a propellant.
DEHM teaches a propellant that comprises a metal fuel such as boron and may comprises other additives such as a plasticizer. The plasticizer is taught to include dioctyl adipate.
It would be well within one of ordinary skill in the art to add plasticizers such as dioctyl adipate to a propellant given that they are known additives for propellants.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Response to Arguments
Applicant's arguments filed 07/23/2025 have been fully considered but they are not persuasive.
Applicant argues that DING does not teach a passivated fuel material of greater than about 40% because different reactor setups and conditions would produce different amounts of passivated material.
Applicant further relied on non-patent literature discussing the expected production from using batch reactors.
This is not persuasive as DING both teaches overlapping ratio of components and the usage of batch reactors.
The ratio of components is taught in paragraphs 9 and 10 of DING.
The ratio of ethyl acetate to liquid polyurethane bonder pre-polymer to isocyanate curing agent to curing catalyst is 40 to 50: 8 to 9: 1 to 2: 0.1 to 0.05 respectively. The amount of amorphous boron is taught to be 10 to 13 times that of the polyurethane bonder pre-polymer in a premix.
The ratio of amorphous boron to ethyl acetate to liquid polyurethane bonder pre-polymer to isocyanate curing agent to curing catalyst is 80 to 117: 40 to 50: 8 to 9: 1 to 2: 0.1 to 0.05.
The isocyanate curing agent is taught in paragraph 12 to include IPDI.
The ratio of amorphous born to the isocyanate curing agent would be expected to be 80 to 117: 1 to 2.
This is not persuasive as ethyl acetate, polyurethane bonder pre-polymer, isocyanate curing agent and a curing catalyst are taught in paragraphs 22 and 28 to be added to a vertical kneader for kneading pot. (reactor) Amorphous boron is then taught in paragraphs 10, 13, and 28 to be added batchwise.
Given that the present specification teaches in examples 1 and 2 of paragraphs 84 and 85 the conditions to produce the claimed fuel material, the amounts used in DING would be expected to produce a fuel material with passivated boron of at least 40%.
Applicant argues that the machine translation of DING does not teach batch mode because the translation would be seen as “fed-batch mode”
This is not persuasive as DING teaches in batch feeding as taught in paragraph 10 of DING.
Therefore, the invention as a whole would have been prima facie obvious to one of ordinary skill in the art at the time of the invention.
Conclusion
Applicant's amendment necessitated the new ground(s) of rejection presented in this Office action. Accordingly, THIS ACTION IS MADE FINAL. See MPEP § 706.07(a). Applicant is reminded of the extension of time policy as set forth in 37 CFR 1.136(a).
A shortened statutory period for reply to this final action is set to expire THREE MONTHS from the mailing date of this action. In the event a first reply is filed within TWO MONTHS of the mailing date of this final action and the advisory action is not mailed until after the end of the THREE-MONTH shortened statutory period, then the shortened statutory period will expire on the date the advisory action is mailed, and any nonprovisional extension fee (37 CFR 1.17(a)) pursuant to 37 CFR 1.136(a) will be calculated from the mailing date of the advisory action. In no event, however, will the statutory period for reply expire later than SIX MONTHS from the mailing date of this final action.
Any inquiry concerning this communication or earlier communications from the examiner should be directed to MING CHEUNG PO whose telephone number is (571)270-5552. The examiner can normally be reached M-F 10-6.
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/MING CHEUNG PO/ Examiner, Art Unit 1771
/ELLEN M MCAVOY/ Primary Examiner, Art Unit 1771