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 .
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 1-7 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Bennett (4469761).
Regarding claims 1, 2, 5-7, Bennett discloses lithium or sodium metal dissolved in liquid anhydrous ammonia (meets outer-sphere electron transferring solvent since it is the same claimed compound) (see ex. 2 or 3 and col. 5, lines 30-42). The claim limitation that the “metal cation coordinated by a plurality of solvent molecules” and “excess electrons stabilized in the solvent as outer-sphere solvated electrons” is inherent to the claimed mixture since the same components are combined. 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.
Regarding claims 3 and 4, the method of forming is a product by process limitation in a product 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 metal additive in Bennett is dissolved in the solvent and thus meets the claim limitations
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 1-10 and 20-29 are rejected under 35 U.S.C. 103 as being unpatentable over Karabeyoglu (20090031700) in view of Tick (3177656).
Regarding claims 1, 2, 5-7, 10, Karabeyoglu discloses a combination of metal such as lithium or sodium in combination with a liquid such as hydrazine for a rocket propellant (0053).
Tick teaches that it is known to use either hydrazine or liquid anhydrous ammonia (meets outer-sphere electron transferring solvent since it is the same claimed compound) as the propellant in a rocket (col. 4, lines 1-10).
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 liquid anhydrous ammonia in place of the hydrazine disclosed by Karabeyoglu since Tick suggests that both are known liquids used in a rocket propellant and since Karabeyoglu discloses the use of hydrazine in the rocket propellant. The claim limitation that the “metal cation coordinated by a plurality of solvent molecules” and “excess electrons stabilized in the solvent as outer-sphere solvated electrons” is inherent to the claimed mixture since the same components are combined. 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.
Regarding claims 3, 4, 9, and 28, the method of forming is a product by process limitation in a product 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).
Regarding claims 8, Karabeyoglu discloses the use of white fuming nitric acid in the rocket propellant (0002).
Regarding claims 20-22, 26, the specific impulse, flame temperature, and coordination complex presence is inherent to the claimed mixture since the same components are combined. 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.
Regarding claims 23-25, it is obvious to use varying amounts of the metal and liquid fuel since their result effective properties have been identified as providing a reducing material and fuel to the rocket propellant. It is well-settled that optimizing a result effective variable is well within the expected ability of a person of ordinary skill in the subject art. In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980), In re Aller, 220 F.2d 454, 105 USPQ 233 (CCPA 1955).
Regarding claims 27-29 contain method limitations for making of the product. The claims are drawn to a product and not the method of producing them, i.e. passing the solvent over the metal mesh. 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).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant argues that the composition disclosed in Bennett is not the same as that which is claimed. This argument is not well taken because the composition Bennett discloses the same installment with the same metal cation that is used by Applicant. Further Applicant admits in the arguments that the metal dissolution occurs “incidentally” when the components are mixed. Thus, the properties will be the same in the composition of the prior art because the metal is mixed into solvent. The fact that applicant recognizes a different benefit that isn’t disclosed is not a patentable feature. 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). 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). Applicant also appears to argue that the mixing of the metal cation in the solvent will not result in the excess electrons but note that there is nothing in the claim that requires any other ingredients. Thus, the mixing of the two components will inherently have the same properties as that which is claimed. These features do not have to be recited in the prior art because the composition has them whether or not they are identified.
In response to applicant's argument that the examiner's conclusion of obviousness is based upon improper hindsight reasoning, it must be recognized that any judgment on obviousness is in a sense necessarily a reconstruction based upon hindsight reasoning. But so long as it takes into account only knowledge which was within the level of ordinary skill at the time the claimed invention was made, and does not include knowledge gleaned only from the applicant's disclosure, such a reconstruction is proper. See In re McLaughlin, 443 F.2d 1392, 170 USPQ 209 (CCPA 1971).
In response to applicant’s argument that there is no teaching, suggestion, or motivation to combine the references, the examiner recognizes that obviousness may be established by combining or modifying the teachings of the prior art to produce the claimed invention where there is some teaching, suggestion, or motivation to do so found either in the references themselves or in the knowledge generally available to one of ordinary skill in the art. See In re Fine, 837 F.2d 1071, 5 USPQ2d 1596 (Fed. Cir. 1988), In re Jones, 958 F.2d 347, 21 USPQ2d 1941 (Fed. Cir. 1992), and KSR International Co. v. Teleflex, Inc., 550 U.S. 398, 82 USPQ2d 1385 (2007). In this case, to use liquid anhydrous ammonia in place of the hydrazine disclosed by Karabeyoglu since Tick suggests that both are known liquids used in a rocket propellant and since Karabeyoglu discloses the use of hydrazine in the rocket propellant.
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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