11018503 (B.P.A.I. Sep. 23, 2010)

Ex Parte Hofmann et al

Board of Patent Appeals and InterferencesSep 23, 2010

11018503 (B.P.A.I. Sep. 23, 2010)

UNITED STATES PATENT AND TRADEMARK OFFICE UNITED STATES DEPARTMENT OF COMMERCE United States Patent and Trademark Office Address: COMMISSIONER FOR PATENTS P.O. Box 1450 Alexandria, Virginia 22313-1450 www.uspto.gov APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO. 11/018,503 12/21/2004 Heinz Hofmann 15670Z 1590 7590 09/24/2010 Leopold Presser Scully, Scott, Murphy & Presser 400 Garden City Plaza Garden City, NY 11530 EXAMINER FELTON, AILEEN BAKER ART UNIT PAPER NUMBER 1793 MAIL DATE DELIVERY MODE 09/24/2010 PAPER Please find below and/or attached an Office communication concerning this application or proceeding. The time period for reply, if any, is set in the attached communication. PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE _______________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _______________ Ex parte HEINZ HOFMANN and KARL RUDOLF ______________ Appeal 2009-014447 Application 11/018,503 Technology Center 1700 _______________ Before BRADLEY R. GARRIS, CHARLES F. WARREN, and TERRY J. OWENS, Administrative Patent Judges. WARREN, Administrative Patent Judge. DECISION ON APPEAL1 Applicants appeal to the Board from the decision of the Primary Examiner finally rejecting claims 1-3 in the Office Action mailed June 3, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a) (2008). 1 The two-month time period for filing an appeal or commencing a civil action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing, as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE” (paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery mode) shown on the PTOL-90A cover letter attached to this decision. Appeal 2009-014447 Application 11/018,503 We affirm the decision of the Primary Examiner. Claim 1 illustrates Appellants’ invention of an explosive composition, and is representative of the claims on appeal: 1. An explosive composition comprising a paste comprised of hexogen and octogen and an inert binder comprised of dioctyl adipate and polyacrylate elastomer, the binder being present in an amount ranging from about 2% to about 10% by weight, where the weight ratio of dioctyl adipate to polyacrylate in the binder is about 1.5:1 and whereas the hexogen is present in an amount ranging from about 86% to about 92% by weight and the octogen is present in an amount ranging from about 4% to about 6% by weight of the composition. Appellants request review of the ground of rejection under 35 U.S.C. § 103(a) advanced on appeal by the Examiner: claims 1-3 over the combination of Hamilton (US 5,821,448), Han (US 6,485,587 B1), and Pierce (US 3,689,331). Br. 7;2 Ans. 3. Opinion Appellants submit that the Examiner erred in concluding that the claimed explosive composition encompassed by claim 1 would have been obvious to one of ordinary skill in this art over the evidence the Examiner finds in the combined teachings of Hamilton, Han, and Pierce, particularly with respect to the claim limitations specifying “an inert binder comprised of dioctyl adipate and polyacrylate elastomer” wherein “the weight ratio of dioctyl adipate to polyacrylate in the binder is about 1.5:1.” Appellants contend that it would not have been obvious to combine Hamilton and Han because the binders disclosed in Hamilton for the explosive mixture of the explosive ingredients hexogen (RDX) and octogen (HMX) have different property demands than the binder comprised of the 2 Appeal 2009-014447 Application 11/018,503 plasticizer dioctyl adipate and the binder polyacrylic acid elastomer disclosed for explosive compositions in Han which contains only one of RDX and HMX. Br. 8. Appellants argue that the mixture of RDX and HMX can “form an extremely sensitive eutectic mixture” which is prevented by the claimed invention because “the fine crystals of RDX which adhere, or are deposited on the HMX surface are dissolved by a solvent medium component and dispersed in the binder.” Br. 8-9. “[A] comparatively large amount of binder is utilized in order . . . to suppress eutectic formation and . . . to dilute the RDX-HMX mixture to such an extent that an undesired detonation would be avoided during combustion.” Br. 9. Appellants contend that Hamilton teaches that the binders disclosed therein are used in the amount of 5-15 weight % based on the total weight of the explosive mixture. Br. 9, citing Hamilton col. 15, ll. 13-15. Appellants contend that Han would not have described the problems of eutectic formation and undesired detonation, and thus based on quantity and composition, the teachings with respect to a single explosive ingredient mixture in Han would not be combined with Hamilton’s explosive mixture of RDX and HMX. Br. 9. Appellants contend that the Examiner is using the hindsight provided by the Specification and has not considered the state of the art and the whole teachings of Hamilton and Han. Br. 9. Appellants argue that Hamilton’s explosive composition is used for the different purpose of providing gas for automotive airbags while the claimed explosive composition is used as a highly energetic explosive. Br. 10. Thus, 2 We considered the Appeal Brief filed February 6, 2009. 3 Appeal 2009-014447 Application 11/018,503 Appellants argue that Hamilton is not the closest prior art and thus, leads away from the claimed invention. Br. 10. Appellants submit that the claimed weight ratio of plasticizer dioctyl adipate to binder polyacrylate elastomer of about 1.5:1 is not disclosed in Han as the reference describes a ratio of plasticizer to binder of 3:1, thus teaching away from the claimed range. Br. 10-12, citing Han col. 5, l. 45, and col. 7, l. 15. Appellants contend that Pierce’s disclosure would not have led to the claimed plasticizer:binder ratio of about 1.5:1 because “Pierce only describes that the plasticizer comprises 30 to 50% of the total propellant composition, and not the binder composition.” Br. 12 (original emphasis deleted). We find that Hamilton would have described to one of ordinary skill in the art a propellant for inflating an automotive air bag wherein the explosive composition can include RDX and HMX, and can further contain any resinous binder soluble in common solvents and any plasticizer compatible with the binder as part of the binder system. Hamilton, e.g., abstract, cols. 1-2, col. 5, l. 32 to col. 6, l. 6, col. 10, l. 34 to col. 12, l. 31, col. 14, l. 48 to col. 15, l. 45, and Fig. 2A. Hamilton uses the phrase “binder system” to include binders and other ingredients, including plasticizers. Hamilton col. 11, ll. 6-13. The explosive composition generally comprises from about 50 to about 90 wt % of a secondary explosive and from about 10 to about 50 wt% of a binder system. Hamilton, col. 11, ll. 38-41. We find that Hamilton would not have disclosed dioctyl adipate as a plasticizer and polyacrylate elastomer as a binder. See Hamilton, e.g., col. 11, l. 51 to col. 12, l. 31, and col. 15, ll. 16-34. 4 Appeal 2009-014447 Application 11/018,503 We find that Hamilton illustrates explosive compositions which contain RDX and HMX wherein the binder can range from 5 to 50 parts by weight to 100 parts by weight of the RDX and HMX ingredients, and the plasticizer can range from 0 to 30 parts by weight to 100 parts by weight of the RDX, HMX, and binder ingredients. Hamilton, e.g., col. 14, l. 48 to col. 15, l. 41, and Exs. 6-14. In the explosive compositions illustrated in Hamilton Examples 13 and 14, the binder system contains 20 parts by weight TMETN plasticizer and 24 parts by weight CAB and GAP binders. See Hamilton col. 15, ll. 19-20 and 30-31. We find that in Hamilton Examples 13 and 14, the weight ratio of plasticizer to binder is 0.83:1. We find that Han would have disclosed to one of ordinary skill in the art a coating process to form a plastic bonded explosive powder wherein an explosive composition is combined with a lacquer comprising, among other things, a binder and a plasticizer, wherein “[n]umerous explosive materials can be used in this process, for example RDX . . . or HMX . . . and can be selected by those skilled in the art.” Han, e.g., abstract, col. 1, ll. 39-67, col. 3, ll. 1-5. Han does not disclose a limitation on the ratio of plasticizer to binder in the composition. Han illustrates the process using a lacquer comprising a combination of a dioctyl adipate (DOA) as a plasticizer and a polyacrylic elastomer (“Hytemp 4454”) as a binder in the “plasticizer to binder ratio 3:1,” as illustrated in Examples 4-6 wherein the explosive is or includes HMX. Han, e.g., col. 5, ll. 37-44, col. 6, ll. 15-19 and 24-30, and col. 7, ll. 1-3, 8-14, and 52-55. The dioctyl adipate and polyacrylic elastomer binder system constitutes 8 weight % of the compositions in Examples 4 and 5, and 4 weight % of the composition in Example 6. 5 Appeal 2009-014447 Application 11/018,503 We find Pierce would have disclosed to one of ordinary skill in this art a nitrocellulose and ferrocene-containing explosive composition, wherein “the weight ratio of plasticizer to the total weight of plasticizer and nitrocellulose can be increased up to about 0.8:1.0 and slightly higher.” Pierce col. 1, ll. 60-65; see also col. 4, ll. 13-29. The propellant compositions can consist essentially of a cured intimate admixture of, among other things, about 5 to 30 weight % nitrocellulose, about 30 to 70 weight % plasticizer, which can be a nitrate ester, and about 1 to 5 weight % ferrocene. Pierce col. 4, ll. 30-44. We find that the Specification discloses that the process described for preparing the claimed explosive composition “imparts unique characteristics and advantages,” including that “during the process of preparing the paste, there is absolutely avoided a eutectic mixture of [RDX] and [HMX] crystals.” Spec. ¶¶ 0026 and 0028. On this record, we cannot agree with Appellants that the Examiner erred in concluding that one of ordinary skill in the art would have combined Hamilton and Han and thence would have been led to use Han’s dioctyl adipate as a plasticizer and polyacrylate elastomer as a binder in a binder system for Hamilton’s explosive compositions containing RDX and HMX, and would have determined the ratio between the plasticizer and binder and the amount of binder in the composition by routine experimentation, as the Examiner contends. Ans. 3-6. We determine that contrary to Appellants’ position, one of ordinary skill in the art would have used Han’s binder and plasticizer in Hamilton’s compositions containing RDX and HMX because Hamilton discloses that any binder and plasticizer can be used in the binder 6 Appeal 2009-014447 Application 11/018,503 system, and Han establishes that one of ordinary skill in the art would have recognized that dioctyl adipate and polyacrylic elastomer form a binder system that can be used with RDX and with HMX. We note that Appellants admit that Hamilton discloses that the binder system is 5-15 weight % of the explosive composition, which range overlaps with the claimed range of about 2 to about 10 weight percent. See above p. 3. In this respect, Han establishes that the dioctyl adipate and polyacrylic elastomer binder system can be used in similar explosive compositions at 4 weight % and 8 weight %, which amounts fall within the claimed weight % range and Hamilton’s weight % range. With respect to the claimed weight ratio of plasticizer to binder of about 1.5:1, we find that Hamilton and Han do not disclose any limitation on the weight ratio of plasticizer to binder. Thus, one of ordinary skill in this art would not have been led to limit the weight ratio of plasticizer to binder either to 0.83:1 as illustrated by Hamilton in explosive compositions containing RDX and HMX, or to 3:1 as illustrated by Han with respect to dioctyl adipate and polyacrylic elastomer used in compositions containing RDX or HMX. Thus, Hamilton and Han would have illustrated to one of ordinary skill in this art weight ratios of plasticizer to binder somewhat above and below the claimed weight ratio of about 1.5:1 in similar compositions. On this record, one of ordinary skill in the art routinely following the combined teachings of Hamilton and Han would have determined an optimum or workable ratio range for Han’s dioctyl adipate and polyacrylic elastomer binder system when used as the binder system for Hamilton’s explosive compositions in the weight % range taught by 7 Appeal 2009-014447 Application 11/018,503 Hamilton and Han. See, e.g., In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (“discovery of an optimum value of a result effective variable in a known process is ordinarily within the skill of the art.); In re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[W]here the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”); see also, e.g., In re Lamberti, 545 F.2d 747, 750 (CCPA 1976) (“[T]he fact that a specific [embodiment] is taught to be preferred is not controlling, since all disclosures of the prior art, including unpreferred embodiments, must be considered.”). We are not convinced otherwise by Appellants’ contentions. While Appellants contend that the claimed composition avoids the formation of a sensitive eutectic mixture and undesirable detonations, we find that Appellants disclose in the Specification that these results can be attributed to the process described therein. There is no limitation in claim 1 specifying that the claimed explosive composition must be prepared by the disclosed process. Cf., e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985), and cases cited therein; In re Bridgeford, 357 F.2d 679, 682-83 (CCPA 1966). Furthermore, Appellants have not established that one of ordinary skill in the art would not have combined Hamilton and Han based on the differences in the utility of the compositions disclosed in these references. Indeed, the evidence in Hamilton and Han establishes that one of ordinary skill in the art would have combined the references without recourse to Appellants’ Specification. Finally, Appellants have not adduced evidence establishing the criticality of the claimed ranges for the weight ratio of plasticizer to binder and the amount of binder system in the composition. See, e.g., In re 8 Appeal 2009-014447 Application 11/018,503 Woodruff, 919 F.2d 1575, 1577-78 (CCPA 1990), and cases cited therein (where the difference between the claimed invention and the prior art is a range, applicant must show that the claimed range is critical, generally by showing that the claimed range achieves unexpected results relative to the prior art range). We agree with Appellants that Pierce would not have taught the claimed plasticizer to binder ratio. Indeed, this person would have recognized from Pierce’s teachings that the amount of plasticizer in the disclosed explosive composition is due to the presence of ferrocene with the nitrocellulose, which ingredients are not disclosed in Hamilton and Han. However, we determine that one of ordinary skill in the art would have arrived at the claimed explosive composition encompassed by claim 1 based on the combined teachings of Hamilton and Han. Accordingly, based on our consideration of the totality of the record before us, we have weighed the evidence of obviousness found in the combined teachings of Hamilton, Han, and Pierce with Appellants’ countervailing evidence of and argument for nonobviousness and conclude, by a preponderance of the evidence and weight of argument, that the claimed invention encompassed by appealed claims 1-3 would have been obvious as a matter of law under 35 U.S.C. § 103(a). The Primary Examiner’s decision is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv). 9 Appeal 2009-014447 Application 11/018,503 AFFIRMED ssl LEOPOLD PRESSER SCULLY, SCOTT, MURPHY & PRESSER 400 GARDEN CITY PLAZA GARDEN CITY, NY 11530 10