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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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 on 27 April 2026 has been entered.
Claim Objections
The numbering of claims is not in accordance with 37 CFR 1.126 which requires the original numbering of the claims to be preserved throughout the prosecution. When claims are canceled, the remaining claims must not be renumbered. When new claims are presented, they must be numbered consecutively beginning with the number next following the highest numbered claims previously presented (whether entered or not).
Misnumbered claim 22, labeled as new, has been renumbered as claim 23. Claim 22 is considered canceled. Correction is required.
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.
Claims 1, 4-6, 9-17, 19, and 23 are rejected under 35 U.S.C. 103 as being unpatentable over Nadkarni et al. (6536352; “Nadkarni”) in view of Luk (5782954).
In reference to claim 1, Nadkarni discloses A frangible firearm projectile, comprising:
A solid-phase sintered frangible projectile body consisting essentially of compacted metal powders, wherein the compacted metal powders include one or more metal powders, and wherein the one or more metal powders include one or more of an iron powder, a zinc powder, a copper powder, a tungsten powder, a bismuth powder, a nickel powder, and a tin powder (column 3, lines 6-59; column 4, lines 60-65; column 6, lines 40-61); and
wherein the frangible firearm projectile includes an anti-sparking agent (lubricant) interspersed within the interior of the frangible projectile body configured to reduce a propensity for the frangible firearm projectile to produce sparks upon striking a target after being fired (column 7, lines 44-50; or column 8, lines 42-59), and
wherein the one or more metal powders in the compacted metal powders are bound together in the frangible projectile body by chemical bonds resulting from diffusion (column 6, lines 28-31 and 40-50), and wherein the one or more metal powders in the compacted metal powders are bound together by oxidation of the at least one metal powder to form a solid solution that includes a three-dimensional network of bonds between at least one oxidized metal powder and the anti-sparking agent in the solid-phase sintered frangible projectile body (column 8, lines 15-33 and 42-56).
Nadkarni discloses an embodiment that produces a solid-phase sintered frangible projectile body, except for wherein the lubricant is one of the listed anti-sparking agents. Luk teaches that boric acid is a typical lubricant used in powder metallurgy, one which may be used as a substitute for other typical lubricants such as stearate, waxes, molybdenum sulfide, or boron nitride (column 6, lines 60-64). Further, the examiner asserts it is within the general knowledge-base of those having ordinary skill in the art to recognize typical or commonly used lubricants; boric acid is a typical lubricant. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to utilize boric acid as the lubricant of Nadkarni, with a reasonable expectation of success, since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
Nadkarni also fails to explicitly disclose wherein the one or more metal powders in the compacted metal powders are bound together in the frangible projectile body by chemical bonds resulting from vapor-phase diffusion bonding of at least one metal powder of the one or more metal powders into the anti-sparking agent to form a plurality of discrete alloy domains, and chemical bonds resulting from the vapor-phase diffusion bonding of the at least one metal powder into the anti-sparking agent.
It is noted that “vapor-phase diffusion” is a process, and, thus, the limitations reciting “vapor-phase diffusion” constitute product-by-process limitations. Thus, Nadkarni in view of Luk need only render obvious the final product of the claim (MPEP 2113). Boric acid sublimes from solid to gas at a relatively lower temperature than would be used for the solid-phase sintering disclosed by Nadkarni, since the melting point of tin is 231.93 C, whereas boric acid sublimes at temperatures as low as 65-100 C. Thus, using boric acid as the solid lubricant in Nadkarni, as proposed above, would clearly result in the one or more metal powders in the compacted metal powders being bound together in the frangible projectile body by chemical bonds resulting from vapor-phase diffusion bonding of at least one metal powder of the one or more metal powders into the anti-sparking agent to form a plurality of discrete alloy domains, and chemical bonds resulting from the vapor-phase diffusion bonding of the at least one metal powder into the anti-sparking agent.
It is noted that the final product of Nadkarni in view of Luk would most likely include a decomposition product of boric acid, e.g., one of tetraboric acid or boron trioxide, depending on the alloying metal powder that is employed. For example, if tin is used as the alloying metal powder in Nadkarni, then the temperature needed to achieve solid-phase sintering would result in thermal decomposition of the vapor-phase boric acid to tetraboric acid, as the vapor-phase diffusion bonding of at least one metal powder of the one or more metal powders into the anti-sparking agent occurs. It is noted that the decomposition products of boric acid are listed in claims 1 and 22, and, thus, a final product having such a decomposition product would render the claims obvious.
In reference to claim 4, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited range. However, it is within the level of ordinary skill in the art to select admixture proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the lubricant as 0.5-5 wt % of the frangible projectile, with a reasonable expectation of success, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claims 5 and 6, Nadkarni in view of Luk makes obvious the claimed invention, Nadkarni discloses heat treatment of the projectile at a range of different temperatures, depending on the embodiment and metals used, e.g., a temperature between the melting points of the matrix metal and binder metal; boric acid begins to decompose at approx. 110 deg. C. Thus, a person of ordinary skill in the art would at once envisage that the lubricant, once the projectile has been cured, will comprise a mixture of two or more of the boric acid, the metaboric acid, the tetraboric acid, and the boron trioxide.
In reference to claim 9, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, copper and iron are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 50-95 wt % copper powder and 4-48 wt % iron powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 10, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, copper and iron are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 10-48 wt % copper powder and 50-95 wt % iron powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 11, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, copper and zinc are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 50-85 wt % copper powder and 15-45 wt % zinc powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 12, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, tungsten and copper are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 60-97 wt % tungsten powder and 20-40 wt % iron powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 13, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, tungsten and bismuth are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 80-97 wt % tungsten powder and 2-15 wt % bismuth powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 14, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, copper, zinc, and iron are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 20-45 wt % copper powder and 40-55 wt % iron powder and 5-30 wt % of zinc powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 15, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, copper, zinc, and iron are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 45-75 wt % copper powder and 3-35 wt % iron powder and 15-30 wt % of zinc powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 16, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited ranges (Nadkarni, tungsten, zinc, and iron are explicitly disclosed). However, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 45-65 wt % tungsten powder and 24-48 wt % iron powder and 3-14 wt % of zinc powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 17, Nadkarni in view of Luk makes obvious the claimed invention, except for the recited range of copper (Nadkarni, copper is explicitly disclosed). Perez explicitly discloses 0-5 wt % of lubricant (anti-sparking agent). Further, it is within the level of ordinary skill in the art to select powder proportions for a powder metallurgy composition. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the metal powders as 95-99.75 wt % copper powder, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art.
In reference to claim 19, Nadkarni in view of Luk makes obvious the claimed invention, except for the casing, propellant, and primer. However, the examiner takes Official Notice that it is well known to form a firearm cartridge by at least partially disposing a projectile within a casing having a propellant and primer therein, in order to provide a self-contained ammunition cartridge suitable for use in a variety of modern firearms. Thus, it would have been obvious to a person of ordinary skill in the art before the effective filing date of the claimed invention to form a firearm cartridge by at least partially disposing the projectile, made obvious by Nadkarni in view of Luk, within a casing having a propellant and primer therein, with a reasonable expectation of success, in order to provide a self-contained ammunition cartridge suitable for use in a variety of modern firearms.
In reference to claim 23, Nadkarni in view of Luk makes obvious the claimed invention, as set forth above in the reference to claim 1.
Claims 3 and 18 are rejected under 35 U.S.C. 103 as being unpatentable over Nadkarni in view of Luk, and further in view of Perez (2012/0308426)
In reference to claim 3, Nadkarni in view of Luk, as set forth above, makes obvious the claimed invention except for wherein the anti-sparking agent forms at least a portion of a coating on the exterior of the projectile body. However, Perez further discloses that a projectile body can be provided with an exterior coating of an anti-sparking agent (paragraph 66 discloses that reduced sparking is achieved through the use of a coating applied to the projectile; paragraph 63 discloses that the coating can be a lubricant). Thus, considering the teachings of Luk and Perez, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to provide a lubricant comprising boric acid as a coating on the projectile, with a reasonable expectation of success, to provide additional anti-sparking functionality, and since it has been held to be within the general skill of a worker in the art to select a known material on the basis of its suitability for the intended use as a matter of obvious design choice.
In reference to claim 18, Nadkarni in view of Luk makes obvious the claimed invention, but fails to explicitly disclose the limitations of the claim. Perez teaches the formation of a frangible projectile having the claimed density (paragraph 54) and the particulate fracture characteristics of the claim (paragraph 98), so as to provide a desired performance at target impact. Thus, it would have been obvious to one of ordinary skill in the art before the effective filing date of the claimed invention to form the projectile, made obvious by Nadkarni and Luk, with the claimed density and particulate fracture characteristics, with a reasonable expectation of success, so as to provide a desired performance upon target impact.
Double Patenting
The nonstatutory double patenting rejection is based on a judicially created doctrine grounded in public policy (a policy reflected in the statute) so as to prevent the unjustified or improper timewise extension of the “right to exclude” granted by a patent and to prevent possible harassment by multiple assignees. A nonstatutory double patenting rejection is appropriate where the conflicting claims are not identical, but at least one examined application claim is not patentably distinct from the reference claim(s) because the examined application claim is either anticipated by, or would have been obvious over, the reference claim(s). See, e.g., In re Berg, 140 F.3d 1428, 46 USPQ2d 1226 (Fed. Cir. 1998); In re Goodman, 11 F.3d 1046, 29 USPQ2d 2010 (Fed. Cir. 1993); In re Longi, 759 F.2d 887, 225 USPQ 645 (Fed. Cir. 1985); In re Van Ornum, 686 F.2d 937, 214 USPQ 761 (CCPA 1982); In re Vogel, 422 F.2d 438, 164 USPQ 619 (CCPA 1970); In re Thorington, 418 F.2d 528, 163 USPQ 644 (CCPA 1969).
A timely filed terminal disclaimer in compliance with 37 CFR 1.321(c) or 1.321(d) may be used to overcome an actual or provisional rejection based on nonstatutory double patenting provided the reference application or patent either is shown to be commonly owned with the examined application, or claims an invention made as a result of activities undertaken within the scope of a joint research agreement. See MPEP § 717.02 for applications subject to examination under the first inventor to file provisions of the AIA as explained in MPEP § 2159. See MPEP § 2146 et seq. for applications not subject to examination under the first inventor to file provisions of the AIA . A terminal disclaimer must be signed in compliance with 37 CFR 1.321(b).
The USPTO Internet website contains terminal disclaimer forms which may be used. Please visit www.uspto.gov/patent/patents-forms. The filing date of the application in which the form is filed determines what form (e.g., PTO/SB/25, PTO/SB/26, PTO/AIA /25, or PTO/AIA /26) should be used. A web-based eTerminal Disclaimer may be filled out completely online using web-screens. An eTerminal Disclaimer that meets all requirements is auto-processed and approved immediately upon submission. For more information about eTerminal Disclaimers, refer to www.uspto.gov/patents/process/file/efs/guidance/eTD-info-I.jsp.
Claims 1-19 are rejected on the ground of nonstatutory double patenting as being unpatentable over claims 1-21 of U.S. Patent No. 11359896. Although the claims at issue are not identical, they are not patentably distinct from each other because the patent claims set forth each and every limitation of the application claims. In fact, the patent claims set forth a “species” of the more generic application claims. Thus, the invention of the application claims are “anticipated” by the “species” of the patent claims. As such, the application claims are not patentably distinct from the patent claims.
Response to Arguments
Applicant's arguments filed 27 April 2026 have been fully considered but they are not persuasive.
Applicant argues that Nadkarni only discloses metal-to-metal, solid-state diffusion. In response to applicant's arguments against the references individually, one cannot show non-obviousness 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). Thus, said argument is moot, since the examiner relies upon the combination of Nadkarni and Luk to render obvious the limitations directed to vapor-phase diffusion between the at least one metal and the anti-sparking agent.
Applicant also argues that Nadkarni teaches away from oxidation of the metal powders to form a solid solution with the anti-sparking agent. The examiner respectfully disagrees. Nadkarni clearly discloses the use of additives in the formation of the frangible projectiles. For example, Nadkarni explicitly discloses adding an oxide to the metal powders, in order to coat the metal powders with inert second phases to alter the frangibility of the projectiles (column 8, lines 15-34). Further, Nadkarni discloses that such an oxide additive may be used in combination with another additive, such as a lubricant (column 8, lines 42-56). The examiner asserts that a person of ordinary skill in the art would at once envisage that the addition of an oxide, e.g., silicon dioxide, in the described manner, in combination with the addition of a lubricant, would result in oxidation of the at least one metal powder to form a solid solution that includes a three-dimensional network of bonds between the oxidized metal powder and the lubricant (lubricant = anti-sparking agent, per Applicant’s own specification). Thus, the examiner asserts that Nadkarni fully supports an embodiment that reads upon the final product of Applicant’s claims 1 and 22. Applicant is reminded that oxidation is a process, and, thus, the limitation in question is a product-by-process limitation.
Further, Applicant argues that Nadkarni’s lubricant does not participate in alloy domain formation. Once again, in response to applicant's argument against the references individually, one cannot show non-obviousness 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). Applicant’s attention is directed to the above-rejection of claim 1, which clearly relies upon the combination of Nadkarni and Luk to render obvious the limitations directed toward the form of alloy domains via vapor-phase diffusion. The examiner’s presents a prima facie case of obviousness, above, and asserts that claims 1 and 22 are unpatentable over Nadkarni in view of Luk (see above rejection of claim 1).
Regarding the various product-by-process limitations, noted above, it is noted that the examiner has presented a prima facie case of obviousness showing a product appearing to be substantially identical to the final product of Applicant’s independent claims 1 and 22. Thus, the burden shifts to the Applicant to show a non-obvious difference. “The Patent Office bears a lesser burden of proof in making out a case of prima facie obviousness for product-by-process claims because of their peculiar nature" than when a product is claimed in the conventional fashion. In re Fessmann, 489 F.2d 742, 744, 180 USPQ 324, 326 (CCPA 1974). Once the examiner provides a rationale tending to show that the claimed product appears to be the same or similar to that of the prior art, although produced by a different process, the burden shifts to applicant to come forward with evidence establishing a nonobvious difference between the claimed product and the prior art product. In re Marosi, 710 F.2d 799, 803, 218 USPQ 289, 292-33 (Fed. Cir. 1983).
Conclusion
Any inquiry concerning this communication or earlier communications from the examiner should be directed to GABRIEL J KLEIN whose telephone number is (571)272-8229. The examiner can normally be reached 11:30am-8pm.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Troy Chambers can be reached at 571-272-6874. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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GABRIEL J. KLEIN
Examiner
Art Unit 3641
/Gabriel J. Klein/Primary Examiner, Art Unit 3641
Prosecution Insights