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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 filed has been entered.
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.
Claim 1, 11, 13, 16-19, 21, and 25-27 are rejected under 35 U.S.C. 103 as being unpatentable over Plomer (4002514) in view of Anderson (20150086416).
Plomer discloses a propellant that includes nitrocellulose or nitroglycerin and “at a maximum of only a few percent metal”. This language is interpreted to include 0 as the lower range of the metal. (col. 1, lines 40-65)
Anderson teaches the use of nanometer size metal such as gold, platinum, silver etc. as an additive to a propellant composition (0007 and 0040).
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 metal additives as taught by Anderson since Anderson suggests their use as an additive to a propellant composition. The nanoparticles are capable of reducing visible light output and modifying wavelength of visible light during deflagration. Regarding claims 2, 11, 14, 21, and 25-27, the method of making the nanoparticles is a product by process limitation which does not limit the composition claim. If the product in the product-by-process claim is the same as or obvious from a product of the prior art, the claim is unpatentable even though the prior product was made by a different process. In re Thorpe, 777 F.2d 695, 698, 227 USPQ 964, 966 (Fed. Cir. 1985). The recitation of acetone is a method limitation since the solvent is not present in the final product. 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. “adapted for”, “suitable for”, 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.
Regarding claims 16-19, it is obvious to use the composition of in a projectile with or without casing since Plomer discloses that it is used in the art area of propellants, explosives, and pyrotechnics.
Claims 4-9 and 22-24 are rejected under 35 U.S.C. 103 as being unpatentable as applied above and further in view of Niedermeyer (20160082513).
Regarding claims 4 and 7, Niedermeyer discloses details relating to the production of different nanoparticles including spherical and coral shaped with the claimed sizes (abstract).
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 particles as taught by Niedermeyer with the composition of Anderson suggests that it is known to use metal nanoparticles in a propellant composition and since Niedermeyer discloses known metal nanoparticles.
Regarding claims 5, 6, 8, and 9, it is also obvious vary the parameters such as amounts and size to achieve the claimed properties. "[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation." In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA 1955). It is a settled principle of law that a mere carrying forward of an original patented conception involving only change of form, proportions, or degree, or the substitution of equivalents doing the same thing as the original invention, by substantially the same means, is not such an invention as will sustain a patent, even though the changes of the kind may produce better results than prior inventions."). See also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 416 (2007).
Regarding claims 16-19, it is obvious to use the composition of in a projectile with or without casing since Plomer discloses that it is used in the art area of propellants, explosives, and pyrotechnics.
Regarding claim 18, Niedermeyer discloses mixtures of metal nanoparticles.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. The arguments regarding the Higa reference are moot due to the new rejection above. Applicant argues the deflagration limitation. This is not persuasive because this is a method limitation in a composition claim. The method of using the composition does not limit the formulation of the composition. Applicant also argues the concentration of nanoparticles. Note that the primary reference discloses a lower amount of 0% of metal particles. Thus the range claimed by applicant is disclosed in the prior art. Applicant argues the properties of the burn rate. This is a method limitation in a composition claim. Further the combination and the prior art will have the same properties relating to the burn rate. The fact that applicant has recognized another benefit of the nanoparticles being included in the composition is not a basis for patentability.
A recitation of the intended use of the claimed invention must result in a structural difference between the claimed invention and the prior art in order to patentably distinguish the claimed invention from the prior art. If the prior art structure is capable of performing the intended use, then it meets the claim.
The recitation of acetone is a method limitation since the solvent is not present in the final product. The recitation in claim 25 “removing at least a portion of the propellant solvent by evaporation” allows for all of the solvent to be removed since the minimum recited is at least a portion. The maximum amount required by the claim is that all of the solvent can be removed. The composition cannot be dry and also have solvent still present.
In response to applicant's argument Niedermeyer is nonanalogous art, it has been held that a prior art reference must either be in the field of the inventor’s endeavor or, if not, then be reasonably pertinent to the particular problem with which the inventor was concerned, in order to be relied upon as a basis for rejection of the claimed invention. See In re Oetiker, 977 F.2d 1443, 24 USPQ2d 1443 (Fed. Cir. 1992). In this case, Niedermeyer discloses details relating to the production of different nanoparticles including spherical and coral shaped with the claimed sizes (abstract). Thus the teaching is relevant to details about the production of metal nanoparticles which is relevant to the disclosure of Anderson which recites the use of metal nanoparticles.
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 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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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Jonathan Johnson can be reached at 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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