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and the fee set forth in 37 CFR 1.17(e) has been timely paid, the finality of the previous Office action has been withdrawn pursuant to 37 CFR 1.114.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, 2, 4, and 5 are rejected under 35 U.S.C. 103 as being unpatentable over Ghaicha (CA 2162411) in view of Lundqvist (5155138).
Regarding claims 1, 2, 4, and 5, Ghaicha discloses an emulsion explosive including an aqueous oxidizer phase that includes ammonium nitrate, sodium nitrate, calcium nitrate, water, and ethylene diamine dinitrate (pg. 11, lines 5-28). The aqueous oxidizer phase is from 60-97 % (pg. 11, lines 28-32). The composition includes an emulsifier such as PIBSA (ex. 1) at up to 5% (pg. 10, lines 10-25), fuel oil such as paraffin oil from 3-30 % (pg. 12, lines 1-15), and microspheres that are copolymers of vinylidene chloride and acrylonitrile (pg. 14, 5-14). Table 1 indicates that the droplet size in the emulsion is less than 2 micron (pg. 19). The claimed amount of microspheres is not disclosed.
Lundqvist discloses and emulsion explosive with the claimed microsphere composition which includes 0-80% by weight of vinylidene chloride, 0-80% by weight of acrylonitrile and 0-70% by weight of methylmethacrylate (col. 3, lines 37-50).
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use the microsphere composition as disclosed by Lundqvist since both patents are emulsion explosives and since both use microspheres that include similar polymers. One of skill would have a reasonable expectation of success to substitute the microspheres of Lundqvist with those described by Ghaicha since they are made of two of the 3 claimed polymers and used for the same purpose. It is also obvious to vary the parameters of the emulsion such as amounts to achieve a desired result. 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). Ghaicha identifies that microspheres as a sensitizing additive and one of skill in the art would be able to optimize the amount of such an additive to achieve the desired result of sensitizing the emulsion explosive. The detonation velocity is an inherent property of this composition since the same components are used. 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. Further the detonation velocity is a statement of intended use in a claim that is drawn to a composition. 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.
Regarding claim 2, Ghaicha does not indicate the amount of ethylene diamine dinitrate as the portion of the aqueous oxidizer phase. However, Ghaicha identifies ethylene diamine dinitrate as a nitrogen contributing additive and one of skill in the art would be able to optimize the amount of such an additive to achieve the desired result of increasing the nitrogen in the emulsion explosive. 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).
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. It is unclear why Applicant indicates that Ghaicha does not disclose the size at less than 2 micron. This size is clearly shown in the table from the prior art. There is no requirement that this size be labeled as essential. There is no difference between a disclosed numerical range and a functional range. The range disclosed by Ghaica is the same as that which is claimed. 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 detonation performance will be the same since the same claimed particle size is achieved by the prior art. The newly amended limitations of the polymer composition are addressed by Lundqvist. Ghaicha clearly discloses the use of polyer microballoons, there is no requirement for the identification of the differences between glass and plastic. The microballoons can provide more than one benefit to the composition. 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).
Applicant argues the detonation velocity. 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 112 rejection is maintained. Applicant has not submitted any evidence that one of ordinary skill would know what oils would meet this limitation.
Any differences between the claimed invention and the prior art may be expected to result in some differences in properties. The issue is whether the properties differ to such an extent that the difference is really unexpected. In re Merck & Co., 800 F.2d 1091, 231 USPQ 375 (Fed. Cir. 1986). The evidence relied upon should establish “that the differences in results are in fact unexpected and unobvious and of both statistical and practical significance.” Ex parte Gelles, 22 USPQ2d 1318, 1319 (Bd. Pat. App. & Inter. 1992).
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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/AILEEN B FELTON/Primary Examiner, Art Unit 1734
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