Ex Parte Hugus et al

Board of Patent Appeals and Interferences

Mar 19, 2012

11504808 (B.P.A.I. Mar. 19, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

Ex parte GEORGE D. HUGUS, EDWARD W. SHERIDAN,
and GEORGE W. BROOKS
____________________

Appeal 2011-011775
Application 11/504,808
Technology Center 3600
____________________

Before: JOHN C. KERINS, PHILLIP J. KAUFFMAN, and
CHARLES N. GREENHUT, Administrative Patent Judges.

GREENHUT, Administrative Patent Judge.

DECISION ON APPEAL

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STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from a rejection of claims 1-
9 under 35 U.S.C. § 103(a) as unpatentable over Ashcroft (GB 2,412,116 A
pub. Sep. 21, 2005) and Hickerson (US 6,186,072 B1 iss. Feb. 13, 2001).
We have jurisdiction under 35 U.S.C. § 6(b). We reverse and enter new
grounds of rejection.
The claims are directed to a munition. Claim 1 reproduced below, is
illustrative of the claimed subject matter:
1. A munition comprising:
a penetrator casing having a first density; and
a payload, the payload comprising a explosive material
dispersed in a metallic binder material having a second density;
wherein the second density is at least as great as the first
density.
OPINION
The rejection of claims 1-9 as being unpatentable over Ashcroft and
Hickerson is reversed.
Regarding claim 1, the sole independent claim involved in this appeal,
the Examiner correctly determined that Ashcroft discloses a reactive
composition that meets the limitations of the claimed “payload,” but does
not disclose the specific casing claimed, i.e., one having a density less than
or equal to that of the metallic binder used in the payload. Ans. 4. These
facts do not appear to be disputed. The Examiner relies on Hickerson to
disclose ballast 40 having a density greater than a casing 20. Id. From this,
the Examiner concludes
it would have been obvious, in view of Hickerson, to select a
casing for the warhead, shell or bullet that has a density less
than the known density of Ashcroft composition payload, so as
to enable the warhead, shell or bullet to survive impact and to
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penetrate more deeply into the target than conventional
warheads.
Ans. 5.
While Hickerson discloses using high-strength steel for the case 20,
Hickerson does not disclose the density of the material selected for the case.
Even if Hickerson’s high-strength steel is presumed to have a density less
than that of the very dense1 ballast—a fair presumption—we fail to see how
a teaching of a casing less dense than a ballast would render obvious
providing a casing having the same or a lower density than that of Ashcroft’s
payload binder material. There does not appear to be any indication that
Ashcroft’s payload is dense enough to function as Hickerson’s ballast. We
see no reason for such a substitution. See Ashcroft 3:13-31. Even
disregarding the ballast, if Hickerson’s case 20 were used to deliver the
payload of Ashcroft there remains no indication that Hickerson’s case has a
density less than or equal to that of Ashcroft’s metallic binder. Decreasing
the density of a payload’s casing would not appear to further the objective of
“enabling the warhead, shell or bullet to survive impact” as the Examiner
suggests. See Ans. 5. Since the Examiner failed to establish that the
proposed combination would yield the claimed subject matter, and did not
articulate a reason with a rational underpinning as to why the claimed
subject matter would have been obvious to one having ordinary skill in the
art, we must reverse the rejection. See App. Br. 6.

1 Greater than about 13g/cm3. Hickerson col. 13, ll. 22-24.
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Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new grounds
of rejection of claims 1-9 under 35 U.S.C. § 103(a) as unpatentable over
Ashcroft and Appellants’ admitted prior art (“AAPA”).
As discussed above, Ashcroft discloses a reactive composition that
meets the limitations of the claimed “payload,” but does not disclose the
claimed casing. Ashcroft discloses that a metal “binder” material, within
which the energetic material in Ashcroft’s reactive composition is dispersed,
may have a density greater than approximately 7 g/cm3. Ashcroft 3:15-17.
Ashcroft does not elaborate on the delivery mechanisms for the reactive
composition. Rather, Ashcroft generally states that “the reactive composition
may have utility in a wide range of ordnance, such as in bullets, reactive
bullets, grenades, warheads (including shape charges), mines, mortar shells,
artillery sheIls, bombs, and demolition charges.” Ashcroft 7:11-14.
In the Background section of Appellants’ Specification, Appellants
state that the density of a steel alloy penetrator casing used in warheads is
“typically 6.5 to 8.5 g/cm3.” Spec. 3, para. [0003]. This statement,
considered in view of the entire Specification, constitutes an admission that
penetrator casings having densities from 6.5 to 8.5 g/cm3 were known and
used in the prior art. See In re Nomiya, 509 F. 2d 566, 569-572 (CCPA
1975). Appellants’ Specification also evidences the fact that “a shaped
charge” is a type of explosive generally used for penetration. See, e.g., Spec.
4, para. [0010].
Although Ashcroft is not concerned with the specifics of the delivery
mechanism, it is clear that Ashcroft’s reactive composition is intended to be
combined with some type of delivery mechanism. Ashcroft 7:11-14.
Ashcroft’s suggestion to incorporate the reactive composition into
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“warheads” is an express instruction to create a “munition”2 of the type
claimed, since the claimed “munition” may comprise a “warhead.” See, e.g.,
claim 9. While in Appellants’ preferred embodiment Appellants are, in part,
concerned with increasing density, and therefore the kinetic energy, of a
warhead in order to enhance target penetration, there is no language in claim
1 limiting the “penetrator casing” to those of penetrators that function in this
manner. Thus, Ashcroft’s express suggestion to deliver the reactive
composition in a “shape charge,” which is understood to have a casing,
amounts to an express suggestion to incorporate Ashcroft’s reactive
composition into a “penetrator casing.” Further, even if the type of casing
required by the claim employs a different mechanism to penetrate a target, it
would have been obvious to one of ordinary skill in the art to incorporate
Ashcroft’s reactive composition into casings of warheads serving essentially
the same or a similar purpose because, based on Ashcroft’s list of ordnance,
one of ordinary skill in the art would have recognized that Ashcroft did not
intend for the reactive composition to be limited to only those specific
ordnance mentioned. Ashcroft describes many benefits, including increased
density, associated with using the reactive composition including a metal
and energetic material disclosed therein. Ashcroft 2:12-30, 15:17-24.
We therefore conclude that it would have been obvious to one having
ordinary skill in the art to place Ashcroft’s reactive composition in a
conventional or typical warhead having a penetrator casing in order to
deliver Ashcroft’s reactive composition to a target requiring penetration.
Doing so would result in Ashcroft’s reactive composition including a metal

2 “Munition” is commonly understood to mean “military equipment of any
kind, as weaponry, ammunition, stores, etc.” n., def. 4a, Oxford English
Dictionary (1989) available at www.OED.com. This common definition is
consistent with the Specification.
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binder having a density of 7 g/cm3 or greater, within a conventional
penetrator warhead casing having a density that is typically 6.5 to 8.5 g/cm3.
Thus, there is a significant and substantial overlap of the subject matter
defined by claim 1 and the subject matter that would have been rendered
obvious by Ashcroft and AAPA. “Where a claimed range overlaps with a
range disclosed in the prior art, there is a presumption of obviousness”
Ormco Corp. v. Align Tech., Inc., 463 F.3d 1299, 1311 (Fed. Cir. 2006)
(citation omitted).
Since Appellants raise no issues concerning the Examiner’s
application of Ashcroft in the rejection of dependent claims 2-9 (App. Br. 7),
we adopt the Examiner’s factual findings and legal conclusions concerning
claims 2-9 (Ans. 5-6) as our own. Accordingly, pursuant to our authority
under 37 C.F.R. § 41.50(b), we enter new grounds of rejection of claim 1-9
under 35 U.S.C. § 103(a) as unpatentable over Ashcroft and AAPA.

DECISION
The rejection of claims 1-9 as unpatentable over Ashcroft and
Hickerson is reversed.
Pursuant to our authority under 37 C.F.R. § 41.50(b), we enter new
grounds of rejection of claims 1-9 under 35 U.S.C. § 103(a) as unpatentable
over Ashcroft and AAPA.
This decision contains new grounds of rejection pursuant to 37 C.F.R.
§ 41.50(b) (2012). 37 C.F.R. § 41.50(b) provides “[a] new ground of
rejection pursuant to this paragraph shall not be considered final for judicial
review.”
37 C.F.R. § 41.50(b) also provides that Appellant, WITHIN TWO
MONTHS FROM THE DATE OF THE DECISION, must exercise one of
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the following two options with respect to the new grounds of rejection to
avoid termination of the appeal as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate amendment of
the claims so rejected or new Evidence relating to the claims so
rejected, or both, and have the matter reconsidered by the
examiner, in which event the proceeding will be remanded to
the examiner. . . .

(2) Request rehearing. Request that the proceeding be reheard
under § 41.52 by the Board upon the same record. . . .

REVERSED; 37 C.F.R. § 41.50(b)

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