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, 3, 4, and 6 are rejected under 35 U.S.C. 102(a)(1) as being anticipated by Porter (2992086).
Regarding claims 1, 3, 4, 6, Porter discloses an energetic composition that includes mixtures of zirconium and magnesium boride from 10-65 % and an oxidizing agent such as perchlorates from 10-65 % (claim 1).
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 2, 5, 7-9, 11-15, and 17-20 are rejected under 35 U.S.C. 103 as being unpatentable over Porter (2992086) as applied above.
Regarding claims, 2 and 9, Porter discloses mixtures of zirconium and magnesium boride from 10-65 % but does not indicate the relative amounts of each within that range.
Regarding claims 5, 7, and 8, Porter discloses the use of conventional inorganic perchlorates (col. 3, lines 30-40)
It would have been obvious to one having ordinary skill in the art at the time the invention was made to vary the parameters of the energetic material to achieve a desired result. The metal materials are used as fuels and thus the optimization would include using different amounts to provide various level of reducing capacity to the composition. 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). It is also obvious to use other inorganic perchlorates such as potassium perchlorate since Porter suggests that it is known to use potassium salt oxidants and since Porter also suggests the use of inorganic perchlorates.
Claims 10 and 16 are rejected under 35 U.S.C. 103 as being unpatentable over Damon (3069300).
Regarding claims 10 and 16, Damon discloses an energetic mixture in table 1 in column four. Damon further recites in col. 4, lines 45-70 that the aluminum and magnesium can be fully replaced by zirconium, that the coal can be fully replaced by magnesium boride, and the potassium nitrate and copper sulfate can be replaced fully by a perchlorate oxidizer. The composition includes a binder which is listed as an optional component in claims 10 and 16.
It would have been obvious to one having ordinary skill in the art at the time the invention was made to use the ingredients listed in col. 4 to replace the components in the chart of col. 4 since Damon teaches that these ingredients can be used as a full replacement for the components listed in the chart. One of skill in the art would have a reasonable expectation of success to arrive at an energetic composition with these ingredients based on the disclosure of Damon since Damon teaches using them as replacement components.
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 10 and 16 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. Claims 10 and 16 are indefinite because they begin with a closed scope language that recites “consisting of” and then subsequently add multiple optional components. The scope of the claim cannot be ascertained because of this inconsistency. Claim 10 depends on claim one which has an open scope claim terminology of “comprising”. The claim scope in claim 10 is inconsistent with this terminology.
Response to Arguments
Applicant's arguments have been fully considered but they are not persuasive. Applicant’s arguments rely on language solely recited in preamble recitations. When reading the preamble in the context of the entire claim, the recitation is not limiting because the body of the claim describes a complete invention and the language recited solely in the preamble does not provide any distinct definition of any of the claimed invention’s limitations. Thus, the preamble of the claim(s) is not considered a limitation and is of no significance to claim construction. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d 1298, 1305, 51 USPQ2d 1161, 1165 (Fed. Cir. 1999). See MPEP § 2111.02.
In response to applicant's argument that the composition is an igniter, 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.
Applicant argues that Porter does not anticipate the instant claims. However Porter clearly discloses in claim one that mixtures of zirconium powder and a metal boride can be used with a perchlorate oxidizer. The examples do not limit the claim language of Porter.
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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/AILEEN B FELTON/Primary Examiner, Art Unit 1734