Ex Parte Schilling

Board of Patent Appeals and Interferences

May 29, 2012

11279485 (B.P.A.I. May. 29, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte THOMAS J. SCHILLING
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Appeal 2009-013881
Application 11/279,485
Technology Center 3600
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Before JENNIFER D. BAHR, JOHN C. KERINS and
STEVEN D.A. McCARTHY, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON APPEAL

The Appellant1 appeals under 35 U.S.C. § 134 from the Examiner’s 1
decision finally rejecting claims 1-15. We have jurisdiction under 35 U.S.C. 2
§ 6(b). 3
We AFFIRM. 4
Claims 1 and 2 are illustrative of the claims on appeal:5

1 The Appellant identifies the real party in interest as Tech Energetics,
Inc. of Datil, New Mexico.
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1. An apparatus for penetrating a target and 1
achieving beyond-penetration results, comprising: 2
a shaped charge liner, 3
wherein the shaped charge liner is 4
formed of a penetrating material adapted to 5
form a penetrating stream of penetrating 6
material to penetrate the target following 7
explosive collapse of the shaped charge 8
liner, and 9
further wherein the shaped charge 10
liner is further formed of a reactive material 11
adapted to form a reactive stream of reactive 12
material following explosive collapse of the 13
shaped charge liner for achieving beyond 14
penetration results; 15
a housing adapted to contain the liner, 16
wherein an opening is formed in one 17
end of the housing through which the 18
penetrating stream of the penetrating 19
material and the reactive stream of the 20
reactive material are discharged; 21
a cavity formed between the liner and the 22
housing adapted to hold an explosive for the 23
detonation of the apparatus; and 24
means for detonating the explosive to 25
discharge at least the leading penetrating stream 26
and the trailing reactive stream toward a target 27
following explosive collapse of the shaped charge 28
liner. 29
2. An apparatus for penetrating a target 30
and achieving beyond-penetration results as recited 31
in claim 1, wherein the shaped charge liner further 32
comprises a material other than a penetrating 33
material and a reactive material. 34
The Examiner rejects claims 1, 6 and 9-15 under 35 U.S.C. 35
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§ 102(b) as being anticipated by Majerus (US 4,499,830, issued Feb. 19, 1
1985); and claims 2-5, 7 and 8 under 35 U.S.C. § 103(a) as being 2
unpatentable over Majerus and Skolnick (US 4,498,367, publ. Feb. 12, 3
1985).2 4
5
ISSUES 6
The Appellant argues independent claims 1 and 6 as a group. (See 7
App. Br. 8-19). Since the Appellant fails to present any persuasive separate 8
argument for the patentability of dependent claims 9-15,3 we group 9
dependent claims 9-15 with independent claims 1 and 6. We select claim 1 10
as being representative of this group. 11

2 The Examiner rejected claim 5 on page 8 of the Final Office Action
mailed March 24, 2008 (“Final Rejection”) as being anticipated by Majerus.
On page 7 of the Answer, the Examiner rejects claim 5 as being
unpatentable over Majerus and Skolnick. The Appellant does not appear to
have objected to the new ground of rejection.

On page 7 of the Final Rejection, the Examiner rejected claims 16-20
under 35 U.S.C. § 112, first paragraph, for lack of enablement. The
Appellant cancelled claims 16-20 on June 23, 2008.

3 On pages 17-18 of the Appeal Brief, the Appellant asserts that the
Examiner has mischaracterized claims 9-13 as product-by-process claims.
Product-by-process limitations are structural limitations, albeit defined in
terms of structure made by a certain method. See SmithKline Beecham
Corp. v. Apotex Corp., 439 F.3d 1312, 1317 (Fed. Cir. 2006)(“Regardless
how broadly or narrowly one construes a product-by-process claim, it is
clear that such claims are always to a product, not a process.”). Since the
Appellant does not explain how the Examiner’s alleged misinterpretation of
claims 9-13 might have led the Examiner to err in rejecting those claims, we
do not address the patentability of claims 9-13 separately from the
patentability of claim 1.
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The Appellant presents separate arguments for the patentability of the 1
grouping including claims 2-5 and the patentability of the grouping 2
including claims 7 and 8. The Appellant’s arguments for the patentability of 3
claims 7 and 8 appear to be substantially identical to the arguments for the 4
patentability of claims 2-5. (Compare App. Br. 31-43 with id. at 19-31). 5
Consequently, claims 7 and 8 stand or fall with claims 2-5. Claim 2 is 6
representative of claims 2-5, 7 and 8. 7
Only issues and findings of fact contested by the Appellant have been 8
considered. See Ex parte Frye, 94 USPQ2d 1072, 1075-76 (BPAI 2010). 9
First, does Majerus describe an apparatus including each 10
limitation of representative claim 1? 11
Second, do the evidence and technical reasoning 12
underlying the conclusion that the subject matter of claim 2 13
adequately support the conclusion that it would have been 14
obvious to modify the warhead described by Majerus to include 15
a shaped charge liner comprising a penetrating material; a 16
reactive material; and a material other than a penetrating 17
material and a reactive material? 18
19
FINDINGS OF FACT 20
The record supports the following findings of fact (“FF”) by a 21
preponderance of the evidence. 22
1. Majerus describes a shaped-charge warhead having a 23
cylindrical body member or housing 10 which contains a liner 16. Majerus 24
describes the housing 10 as having “an explosive holding cavity filled with 25
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an explosive material 12 and a forward end 14 operatively closed off by a 1
concavely-shaped metal liner 16.” (Majerus, col. 3, ll. 49-53). 2
2. Majerus does not describe expressly the warhead as including 3
items such as a booster, a detonator, fusing, sensor components or other 4
components of an initiation system for detonating the explosive material 12. 5
Nevertheless, the explosive material 12 constitutes a shaped charge. The 6
Examiner takes official notice that “some means for detonating is required 7
by shape charges to ignite the charge.” (Ans. 8; see also id. at 5). Although 8
the Appellant denies the Examiner’s authority to take official notice of this 9
fact without supplying documentary evidence to support the finding (see, 10
e.g., App. Br. 11-12), the Appellant does not deny the fact. The Examiner’s 11
unrebutted finding that that “some means for detonating is required by shape 12
charges to ignite the charge” necessarily implies that the warhead described 13
by Majerus necessarily has “means for detonating the explosive” as recited 14
in claim 1. 15
3. Majerus describes the liner 16 as being formed of copper or 16
aluminum. (Majerus, col. 3, ll. 54-55). Aluminum and oxygen-free, high-17
conductivity copper are examples of penetrating materials. (See Spec. 6, ll. 18
6-7). 19
4. Majerus describes the liner 16 as being further formed from a 20
“lethal material” 18. In the embodiment depicted in Figure 4B of Majerus, 21
the lethal material 18 is sandwiched between inner and outer liner materials 22
21, 22. (Majerus, col. 4, ll. 3-5). 23
5. Majerus describes the “lethal material” 18 as comprising either 24
a relatively inert material; a naturally pyroforic material such as zirconium; 25
or a chemically toxic material. (Majerus, col. 5, ll. 43-47). Zirconium, one 26
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of those examples, is also an example of a reactive material. (See Spec. 6, 1
ll. 12-15; see also Reply Br. 4 (“As a person skilled in the art would 2
appreciate, pyroforicity is a reaction.”)). 3
6. Majerus discloses that the liner 16 is designed to produce a 4
plurality of “lethal material” fragments 30 explosively projected along a 5
shot-line 28. (Majerus, col. 4, ll. 18-24 and fig. 4C). 6
7. Skolnick discloses four control parameters to be considered in 7
choosing materials for the liner of a shaped charge apparatus. (Skolnick, 8
col. 2, ll. 28-31). One of these parameters consists of: 9
[m]atching the acoustical or shock impedance of 10
the different layers of materials in a liner to reduce 11
or eliminate the reflection of energy or shock 12
bounce from the detonation force at the interface 13
of the layers of materials, and to promote the 14
maximum transmission of explosive energy across 15
such material interfaces to form the maximum 16
momentum in the high velocity jet. 17
(Skolnick, col. 2, ll. 50-56). 18
8. Skolnick teaches that the use of three or more materials in a 19
shaped charge liner may make it easier to optimize the flow of explosive 20
energy across all of the layers of the liner. (See Skolnick, col. 5, ll. 23-33). 21
22
ANALYSIS 23
First Issue 24
The Appellant contends that Majerus fails to describe an apparatus 25
including “means for detonating the explosive” as recited in representative 26
claim 1. (App. Br. 11-12). A reference may disclose a claim limitation 27
either expressly or inherently. Kalman v. Kimberly-Clark Corp., 713 F.2d 28
760, 771 (Fed. Cir. 1983). Majerus describes an apparatus including a 29
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shaped charge. The Examiner finds, and the Appellant does not deny, that 1
shaped charges require detonators or other initiating systems to detonate. 2
See In re Ahlert, 424 F.2d 1088, 1091 (CCPA 1970). Therefore, Majerus 3
describes an apparatus which necessarily includes a detonator, that is, a 4
“means for detonating the explosive.” (FF 2). 5
The Appellant also contends that Majerus fails to describe an 6
apparatus including a shaped charge liner formed from a penetrating 7
material and further formed from a reactive material. (App. Br. 14-17; 8
Reply Br. 3-6). Where the Specification states a “special definition” of a 9
claim term, that “special definition” is controlling for purposes of 10
interpretation that term. Phillips v. AWH Corp., 415 F.3d 1303, 1316 (Fed. 11
Cir. 2005)(en banc). The Specification formally defines both the term 12
“penetrating material” and the term “reactive material.” (See Spec. 6, ll. 4-13
15). These formal definitions include examples of penetrating materials and 14
reactive materials. More specifically, the Specification states that both 15
“[o]xygen-free high-conductivity copper” and aluminum are examples of 16
penetrating materials. (Id.) This is true even if the Specification also 17
defines the term “reactive material” sufficiently broadly to include 18
aluminum. Zirconium is an example of a reactive material. (Id.) 19
Majerus describes an apparatus, that is, a warhead including a shaped 20
charge liner 16 formed from copper or aluminum and further formed from a 21
“lethal material” 18 such as zirconium. (FF 3-5). Since copper and 22
aluminum are penetrating materials and zirconium is a reactive material as 23
the terms penetrating material and reactive material are defined in the 24
Specification, the shaped charge liner 16 disclosed by Majerus is formed 25
from a penetrating material and further formed from a reactive material. 26
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(Id.) It is unnecessary for Majerus to refer to the zirconium as a “reactive 1
material” or to teach those advantages which the Appellant perceives as 2
resulting from the use of a reactive material in order for Majerus to describe 3
an apparatus including a shaped charge liner formed from reactive material. 4
Kalman at 722 (“The law of anticipation does not require that the reference 5
‘teach’ what the subject patent teaches.”). Even assuming for purposes of 6
this appeal only that, as the Appellant contends, the Specification identifies 7
an “order for placement of the reactive material” (App. Br. 16 (citing the 8
definition of “order” at Spec. 7, ll. 14-15)(emphasis omitted)), that order is 9
not recited in representative claim 1. 10
Finally, the Appellant contends that Majerus fails to describe an 11
apparatus including a shaped charge liner formed from a reactive material 12
“adapted to form a reactive stream of reactive material following explosive 13
collapse of the shaped charge liner for achieving beyond penetration 14
results.” (Italics added.) (See App. Br. 9-11 and 16-17; Reply Br. 8-9). The 15
limitation “for achieving beyond penetration results” is functional in nature. 16
Therefore, the limitation is met by a shaped liner formed from a reactive 17
material capable of achieving “beyond penetration results.” See In re 18
Schreiber, 128 F.3d 1473, 1478-79 (Fed. Cir. 1997)(upholding the Board’s 19
affirmance of a rejection under section 102(b) on the basis of a finding that a 20
device disclosed in a prior art reference was capable of performing a 21
function which the appellant alleged to distinguish the appellant’s apparatus 22
from the device). Furthermore, 23
where the Patent Office has reason to believe that a functional 24
limitation asserted to be critical for establishing novelty in the 25
claimed subject matter may, in fact, be an inherent 26
characteristic of the prior art, it possesses the authority to 27
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require the applicant to prove that the subject matter shown to 1
be in the prior art does not possess the characteristic relied on. 2
In re Swinehart, 439 F.2d 210, 213(CCPA 1971); accord In re Best, 562 3
F.2d 1252, 1254-55 (CCPA 1977). 4
The Examiner found during prosecution that Majerus discloses an 5
apparatus including a shaped charge liner formed from a reactive material 6
“adapted to form a reactive stream of reactive material following explosive 7
collapse of the shaped charge liner for achieving beyond penetration 8
results.” (Final Office Action mailed March 24, 2008 (“Final Rejection”) at 9
8 (asterisk omitted.)). The Appellant formally defines “beyond-penetration 10
result” to include “thermo-chemical and kinetic events occurring in the 11
immediate area of a material stream impact beyond an entry hole through a 12
target.” (Spec. 7, ll. 1-3). “Beyond-penetration results” as defined in the 13
Specification include combustion effects. (Id., ll. 7-8) 14
The Examiner correctly finds that the shaped charge liner 16 15
described by Majerus is formed from a reactive material, namely, zirconium. 16
(FF 4-5; see also Final Rejection at 5). Majerus further discloses that the 17
liner 16 is designed to collapse once the explosive material 12 detonates to 18
produce a plurality of “lethal material” fragments 30 explosively projected 19
along a shot-line 28. (FF 6). This disclosure implies that the zirconium 20
“lethal material” 18 is adapted to form a reactive stream of reactive material 21
following explosive collapse of the shaped charge liner 16, where the term 22
“stream” is defined, consistently with the Specification, to include “ejecta 23
from detonation and explosive collapse of a shaped charge device.” (Spec. 24
7, ll. 16-17). Since the zirconium in the reactive stream of reactive material 25
is pyroforic (FF 5), that is, susceptible of spontaneously igniting into 26
combustion, the Examiner has reason to believe that the zirconium “lethal 27
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material” 18 described by Majerus is reactive material “adapted to form a 1
reactive stream of reactive material following explosive collapse of the 2
shaped charge liner for achieving beyond penetration results.” 3
The Appellant provides no persuasive evidence to rebut this finding. 4
The arguments of the Appellant’s attorney are not a substitute for evidence 5
where, as here, evidence is required. See In re Geisler, 116 F.3d 1465, 1470 6
(Fed. Cir. 1997). We adopt the finding as our own. 7
The Appellant has not identified any limitation of claim 1 which the 8
Examiner has not persuasively shown to be described by Majerus. We 9
sustain the rejection of claims 1, 6 and 9-15 under § 102(b) as being 10
anticipated by Majerus. 11
12
Second Issue 13
In order to establish a prima facie case of obviousness, an examiner 14
must undertake the factual inquiries listed in Graham v. John Deere Co., 383 15
U.S. 1, 17-18 (1966). In addition, the examiner must articulate some 16
“reasoning with some rational underpinning to support the legal conclusion 17
of obviousness.” In re Kahn, 441 F.3d 977, 988 (Fed. Cir 2006). This 18
reasoning must show that “there was an apparent reason to combine the 19
known elements in the fashion claimed.” KSR Int’l Co. v. Teleflex, Inc., 550 20
U.S. 398, 418 (2007). The Examiner need not conclude that the 21
combination of known elements addresses the problem the Appellant was 22
trying to solve. Id. at 420. 23
The apparent reason need not appear in one or more of the references 24
on which the examiner relies. Instead, the examiner when analyzing the 25
evidence may employ common sense not inconsistent with the ordinary level 26
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of knowledge and skill in the art at the time of the invention. Perfect Web 1
Techs. v. InfoUSA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009). Reliance 2
on common sense in support of a rejection under § 103(a) does not imply the 3
use of impermissible hindsight. 4
The Appellant argues that the Examiner has not shown that there was 5
an apparent reason to combine the known elements in the fashion claimed. 6
(See, e.g., App. Br. 27). The Examiner correctly finds that Majerus 7
describes an apparatus formed from a penetrating material, that is, copper or 8
aluminum; and a reactive material, that is, zirconium. (FF 3-5). It is 9
reasonable to assume that there likely would exist a significant impedance 10
mismatch across an interface between zirconium and either copper or 11
aluminum. The Appellant provides no persuasive reason why this is not 12
likely to be so. (See Reply Br. 6). Skolnick teaches improving the flow of 13
explosive energy across a liner formed from different metals such as 14
zirconium, on the one hand, and copper or aluminum, on the other, by 15
positioning a third metal between the two to reduce the overall energy loss 16
due to reflections at the resulting metal-to-metal interfaces. (FF 7 and 8). In 17
view of these disclosures and teachings, the Examiner correctly concluded 18
that it would have been obvious “to modify Majerus to include a tertiary 19
layer as taught by Skolnick in order to manipulate energy transfer of a 20
shaped charge.” (Ans. 7). 21
The Appellant’s arguments at page 6 of the Reply Brief do not 22
convince us that one of ordinary skill in the art would have lacked a 23
reasonable expectation of success following these teachings. Likewise, the 24
Appellant has not identified a persuasive reason why the proposed 25
modification of the shaped charge liner described by Majerus would alter the 26
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principle of operation of Majerus’ warhead. (See, e.g., App. Br. 23). 1
Representative claim 2 does not recite any “symmetry of materials” within 2
the liner. The Appellant has provided neither a citation to the teachings of 3
Skolnick nor independent evidence to suggest that an apparatus combining 4
the teachings of Majerus and Skolnick would have been inoperable absent 5
such symmetry. Neither has the Appellant provided a citation to the 6
teachings of Skolnick or independent evidence to suggest that one of 7
ordinary skill in the art would have lacked a reasonable expectation of 8
success in combining the teachings of Majerus and Skolnick absent such 9
symmetry. (See, e.g., App. Br. 21-22). We sustain the rejection of claims 2-10
5, 7 and 8 under 35 U.S.C. § 103(a) as being unpatentable over Majerus and 11
Skolnick. 12
13
DECISION 14
We AFFIRM the Examiner’s decision rejecting claims 1-15. 15
16
AFFIRMED 17
18
19
Klh 20