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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 § 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 1, 3-7 and 21-27 are rejected under 35 U.S.C. 103 as being unpatentable over Scheffee (20010025677) in view of Lundstrom (20040216818).
Regarding claims 1, 3-7 and 21-27, Scheffee discloses a monopropellant that includes greater than 20 % water (i.e. 20-100 %) (claim 4), isopropanol from 5-15 % (0011), and hydrogen peroxide (0010).
Lundstrom teaches that it is known to use highly stabilized hydrogen peroxide in a monopropellant composition which includes alcohol and water (claim 3). Lundstrom also discloses greater than 20 % water.
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 stabilized hydrogen peroxide as taught by Lundstrom with the monopropellant of Scheffee since both compositions are monopropellant compositions and since Lundstrom indicates that highly stabilized hydrogen peroxide is known to be used in these types of composition. The production products, fuel energy density, and flame temperature are considered to be inherent properties to this composition since the same ingredients are shown. 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 detonation details of claims 21-24 are method of use limitations which do not limit the composition claim as described. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
Regarding claims 25-27, both prior art patents disclose greater than 20 % water which meets the claimed limitations.
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 1, 3-7 and 21-27 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 “highly stabilized” in claim 1 is a relative term which renders the claim indefinite. The term 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 the amount of water but note that both prior art references disclose the amount to be greater than 20 %. This would include up to 100 % water. The examples do not limit this disclosure. The range disclosed by Scheffee completely overlaps the instant claimed range and overlapping ranges are evidence of prima facie obviousness.
Lundstrom clearly discloses the use of stabilized or non-stabilized. Thus, either can be used. Applicant’s arguments fail to address the prior art disclosure that a stabilizer cab be used. Thus, the teaching of the stabilizer renders the instant claims obvious.
Regarding the 112 rejection, the term “highly stabilized” is considered to be a relative term. There is no evidence that this term is defined or has a specific meaning in the art.
The declaration under 37 CFR 1.132 is insufficient to overcome the rejection as set forth in the last Office action because the affidavit only compares the examples of the prior art and does not consider the full disclosure of the reference. Both prior art references disclose the amount to be greater than 20 %. This would include up to 100 % water. The examples do not limit this disclosure. The range disclosed by Scheffee completely overlaps the instant claimed range and overlapping ranges are evidence of prima facie obviousness. Further, the tests as shown by the examples in the instant specification are not commensurate with the scope of the claims due to narrower ranges of ingredients. The declaration states that it is “very likely” that the examples of the prior art would not pass the detonation tests. First, these arguments have no basis in fact. There is no evidence provided and the arguments relates only to the example of the prior art and not to the full disclosure. In addition this limitations relate to the use of the composition. Method of use limitations do not limit the composition claim as described. “Expressions relating the apparatus to contents thereof during an intended operation are of no significance in determining patentability of the apparatus claim.” Ex parte Thibault, 164 USPQ 666, 667 (Bd. App. 1969). Furthermore, “[i]nclusion of material or article worked upon by a structure being claimed does not impart patentability to the claims.” In re Young, 75 F.2d 996, 25 USPQ 69 (CCPA 1935).
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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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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