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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 5-19 are rejected under 35 U.S.C. 103 as being unpatentable over Hordos (8372223) in view of Yoshikawa (6416599).
Regarding claim 5-19, Hordos discloses a gas generating composition that includes alkali metal nitrate oxidizers (i.e. potassium) from 10-90 % (col. 3, lines 53-67 and col. 4, lines 1-6), fuel mixtures such as guanidine nitrate and either bistetrazole amine (col. 2, lines 8-15) or bitetrazole methane (col. 3, 10-25) at amounts .75 to 1.25: .75 to 1.25 )col. 3, lines 33-38). The composition can include conventional additives such as boron nitride that are known in the art from .1-15 % (col. 4, lines (7-15). The claimed boron carbide is not disclosed.
Yoshikawa teaches the use of boron carbide as a slag forming agent in a gas generating composition and indicates that both boron nitride and boron carbide are known slag forming agents. (col. 3, lines 1-35).
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 boron carbide as taught by Yoshikawa with the composition of Hordos since both relate to gas generating compositions and since Yoshikawa teaches the similar properties of slag forming between the boron carbide and boron nitride. The autoignition temperature is an inherent property and a statement of intended use of the composition. 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. 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.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive.
Applicant argues the autoignition temperature and indicates the autoignition temperature of Hordos. Note that a 103 rejection has been set forth which includes the addition of the compounds of Yoshikawa which change the composition of Hordos. The autoignition temperature is considered to be inherent to this composition as taught by the combination of references and not a single reference. Since the same ingredients with amounts are taught in the prior art, the composition will possess the same properties.
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).
Response to Declaration
The declaration under 37 CFR 1.132 is insufficient to overcome the rejection of claims as set forth in the last Office action. The declaration does not set forth evidence to support the allegations that the prior art would not inherently have the same claim autoignition temperature. The declaration also argues specific amounts that are outside the scope of the claims. The prior art teaches the same claimed amounts and thus will have the same properties. Further, one of skill in the art would have an expectation of success to substitute one known additive in a gas generating composition for another. This is especially true in light of the teaching that both boron nitride and boron carbide are known slag formers. The two compounds are indeed structurally different but the prior art identifies them both as performing a similar and equivalent function, i.e. slag forming. The arguments regarding additional benefits provided by the boron carbide are not persuasive since the inclusion of the boron carbide in the Hodos composition will inherently have those same claimed benefits. 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). The declaration also indicates that the specific examples in Hordos include boron nitride at 1 % but note that the prior art is not limited to the examples. The disclosure clearly recites boron nitride from .1-15 %. See MPEP 2123 which recites: The use of patents as references is not limited to what the patentees describe as their own inventions or to the problems with which they are concerned. They are part of the literature of the art, relevant for all they contain. Disclosed examples and preferred embodiments do not constitute a teaching away from a broader disclosure or nonpreferred embodiments. In addition, the claims do not require a specific amount of boron carbide so one of skill in the art would presume that even a 1% addition would achieve the claimed autoignition temperature. 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 (i.e., amount of boron carbide) 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
All claims are identical to or patentably indistinct from, or have unity of invention with claims in the application prior to the entry of the submission under 37 CFR 1.114 (that is, restriction (including a lack of unity of invention) would not be proper) and all claims could have been finally rejected on the grounds and art of record in the next Office action if they had been entered in the application prior to entry under 37 CFR 1.114. Accordingly, THIS ACTION IS MADE FINAL even though it is a first action after the filing of a request for continued examination and the submission under 37 CFR 1.114. See MPEP § 706.07(b). 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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/AILEEN B FELTON/Primary Examiner, Art Unit 1734