DETAILED ACTION
Notice of Pre-AIA or AIA Status
The present application is being examined under the pre-AIA first to invent provisions.
Claims 1-10 are currently pending in this Application.
Priority
CONTINUING DATA
This application is a 371 of PCT/GB2023/050566 03/10/2023
FOREIGN APPLICATIONS
UNITED KINGDOM 2203917.6 03/21/2022
Information Disclosure Statement
Applicant’s Information Disclosure Statement, filed on September 24, 2024 has been considered. Please refer to Applicant’s copies of the 1449 submitted herewith.
Claim Rejections - 35 USC § 112(b)
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 primary purpose of this requirement of definiteness of claim language is to ensure that the scope of the claims is clear so the public is informed of the boundaries of what constitutes infringement of the patent. A secondary purpose is to provide a clear measure of what applicants regard as the invention so that it can be determined whether the claimed invention meets all the criteria for patentability and whether the specification meets the criteria of 35 U.S.C. 112, first paragraph with respect to the claimed invention.", (see MPEP § 2173).
Claims 7, 8 and 10 are rejected under 35 U.S.C. 112(b) being indefinite for failing to particularly point out and distinctly claim the subject matter which the inventor or a joint inventor regards as the invention.
Claims 7, 8 and 10 use the language "includes" which is an open-ended transition phrase. Per MPEP 2111.03 I, the use of such language "does not exclude additional, unrecited elements of method steps." Accordingly, the metes and bounds of the claims cannot be sufficiently interpreted by a person having ordinary skill in the art. Applicant may overcome the rejection by, for example, replacing the word "includes" with “has the steps”.
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.
The factual inquiries for establishing a background for determining obviousness under 35 U.S.C. 103 are summarized as follows:
1. Determining the scope and contents of the prior art.
2. Ascertaining the differences between the prior art and the claims at issue.
3. Resolving the level of ordinary skill in the pertinent art.
4. Considering objective evidence present in the application indicating obviousness or nonobviousness.
This application currently names joint inventors. In considering patentability of the claims the examiner presumes that the subject matter of the various claims was commonly owned as of the effective filing date of the claimed invention(s) absent any evidence to the contrary. Applicant is advised of the obligation under 37 CFR 1.56 to point out the inventor and effective filing dates of each claim that was not commonly owned as of the effective filing date of the later invention in order for the examiner to consider the applicability of 35 U.S.C. 102(b)(2)(C) for any potential 35 U.S.C. 102(a)(2) prior art against the later invention.
Claims 1-10 are rejected under 35 U.S.C. 103 as being unpatentable over US Patent No.3,939,148 A, in view of KYPRINAOU DIMITRIS et al.
The present invention is drawn to a method for the manufacture of the relatively in- sensitive nitroamine explosive called "HMX", also known as 1,3,5,7-tetranitro-1,3,5,7-tetraazacyclooctane. The method comprises, an input flow mixture comprising "TAT" (1,3,5,7-tetraacetyl-1,3,5,7-tetraazacyclooctane) with nitric acid of >95% in combination with P2O5, at temperatures of 60 to 80°C in a flow reactor to control the rate of production of explosive material.
Determining the scope and contents of the prior art. (See MPEP § 2141.01)
US Patent No.3,939,148 A teaches a method directed to the preparation of HMX starting from TAT by use of HNO3/P2O5 at elevated temperatures of up to 90°C, see claims 1-3, 8, 11 and 18, while the procedures of examples 1-14 and table 1 apply 50 to 70°C. US Patent No.3,939,148 A does not flow chemistry in the process.
KYPRINAOU DIMITRIS et al. teaches the application of flow chemistry specifically for the synthesis of energetic materials, i.e., explosives, propellants, and pyrotechnics. Chapters 2.1, 2.4 and 3.1 explain the principle and the advantages, in particular why flow chemistry is considered in- herently safer than batch synthesis and chapter.
Finding of prima facie obviousness --- rationale and motivation (See
MPEP § 2142-2143)
The Supreme Court in KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398, 415-421, 82 USPQ2d 1385, 1395-97 (2007) identified a number of rationales to support a conclusion of obviousness which are consistent with the proper "functional approach" to the determination of obviousness as laid down in Graham. See MPEP 2143. Examples of rationales that may support a conclusion of obviousness include:
(A) Combining prior art elements according to known methods to yield predictable results;
(B) Simple substitution of one known element for another to obtain predictable results;
(C) Use of known technique to improve similar devices (methods, or products) in the same way;
(D) Applying a known technique to a known device (method, or product) ready for improvement to yield predictable results;
(E) "Obvious to try" — choosing from a finite number of identified, predictable solutions, with a reasonable expectation of success;
(F) Known work in one field of endeavor may prompt variations of it for use in either the same field or a different one based on design incentives or other market forces if the variations are predictable to one of ordinary skill in the art;
(G) Some teaching, suggestion, or motivation in the prior art that would have led one of ordinary skill to modify the prior art reference or to combine prior art reference teachings to arrive at the claimed invention.
Note that the list of rationales provided is not intended to be an all-inclusive list. Other rationales to support a conclusion of obviousness may be relied upon by Office personnel. Here one or more of rationales (C) and (G) apply.
It would have been prima facie obvious for a person of ordinary skill in the art before the effective filing date of the claimed invention to use the teachings of US Patent No.3,939,148 A to explore using a flow reactor to control the rate of production of explosive material as the instantly claimed invention. Since KYPRINAOU DIMITRIS et al. teaches the application of flow chemistry specifically for the synthesis of energetic materials, i.e., explosives, propellants, and pyrotechnics. One skilled in the art would have been motivated to consider using a flow reactor to control the rate of production of explosive material as the instantly claimed invention.
A reference is good not only for what it teaches by direct anticipation but also for what one of ordinary skill in the art might reasonably infer from the teachings. (In re Opprecht 12 USPQ 2d 1235, 1236 (Fed Cir. 1989); In re Bode 193 USPQ 12 (CCPA) 1976). In light of the foregoing discussion, the Examiner concludes that the subject matter defined by the instant claims would have been obvious within the meaning of 35 USC 103(a). From the teachings of the references, it is apparent that one of ordinary skill in the art would have had a reasonable expectation of success in producing the claimed invention. Therefore, the invention as a whole was prima facie obvious to one of ordinary skill in the art at the time the invention was made, as evidenced by the references, especially in the absence of evidence to the contrary.
Accordingly, claims 1-10 are rendered obvious in view of the references above. Applicant may wish to consider providing evidence of unexpected results to overcome the obviousness rejection.
Therefore, the present claims are prima facie obvious and properly rejected.
Telephone Inquiry
Any inquiry concerning this communication or earlier communications from the examiner should be directed to KAMAL A SAEED whose telephone number is (571) 272-0705.
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If attempts to reach the examiner by telephone are unsuccessful, the examiner’s supervisor, Adam C Milligan can be reached at (571)270-7674. The fax phone number for the organization where this application or proceeding is assigned is 571-273-8300.
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/Kamal A Saeed/
Primary Examiner, Art Unit 1626
Prosecution Insights