Orbital ATK, Inc.

Patent Trials and Appeals Board

Sep 30, 2020

13832960 - (D) (P.T.A.B. Sep. 30, 2020)

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.
13/832,960 03/15/2013 Nathan M. Seidner 2507-11776(22596-US-02) 7507
60794 7590 09/30/2020
TRASKBRITT, P.C./ NGIS
P.O. BOX 2550
SALT LAKE CITY, UT 84110
EXAMINER
FELTON, AILEEN BAKER
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
09/30/2020 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
USPTOMail@traskbritt.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte NATHAN M. SEIDNER, JAY D. SHULER,
and RICHARD BRAD CRAGUN
____________

Appeal 2019-005834
Application 13/832,960
Technology Center 1700
____________

Before MAHSHID D. SAADAT, DONNA M. PRAISS, and
BRIAN D. RANGE, Administrative Patent Judges.

SAADAT, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 seeks our review under 35 U.S.C. § 134(a) from a Non-
final rejection of claims 1–5, 7–9, 12–14, and 21.2 We have jurisdiction
under 35 U.S.C. § 6(b).
We affirm in part.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42(a). Appellant identifies the real party in interest
as Northrop Grumman Innovation Systems, Inc. Appeal Br. 1.
2 Claims 6, 10, 11, and 16 have been canceled and claims 15 and 17–20 have
been withdrawn from consideration.
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STATEMENT OF THE CASE
The Invention
According to the Specification, the invention relates to “precursor
formulations for use as an energetic material that includes high surface area
carbon black, wherein the energetic material reduces the likelihood of
premature ignition or explosion due to electrostatic charge buildup during
manufacture, transportation, storage, or use.” Spec. ¶ 1.
Exemplary Claim
Independent claim 1 exemplifies the claims at issue and reads as
follows:
1. A precursor formulation of a propellant composition
comprising:
at least one of a fuel or an oxidizer;
a binder consisting of a hydroxyl terminated polybutadiene
(HTPB); and
a conductive, amorphous carbon black having a specific surface
area of at least about 1,200 m2/g, the conductive, amorphous
carbon black comprising from about 0.05% by weight to about
0.25% by weight of a total weight of the propellant
composition.
Appeal Br. 30 (Claims App.).
The Rejection on Appeal
Claims 1–5, 7–9, 12–14, and 21 stand rejected under 35 U.S.C. § 103
as unpatentable over Boyd (US 2003/0041935 Al; pub. Mar. 6, 2003) and
Pile (US 2005/0189053 Al; pub. Sept. 1, 2005). Non-final Act. 2–4.3

3 The Non-final Rejection of claims 1–5, 7–9, 12–14, and 21 under
35 U.S.C. § 112(a) was withdrawn by the Examiner. Ans. 5.
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ANALYSIS
We have reviewed the rejection in light of Appellant’s arguments that
the Examiner erred. For the reasons explained below, we concur with the
Examiner’s conclusion concerning unpatentability under U.S.C. § 103
except where we otherwise indicate. Where we affirm, we adopt the
Examiner’s findings and reasoning in the Non-final Office Action and
Answer. See Non-final Act. 2–4; Ans. 5–7. We add the following to
address and emphasize specific findings and arguments.
CLAIM 1
Combination of Boyd and Pile
As noted above, the U.S.C. § 103 rejection of claim 1 is based on
Boyd for disclosing the recited fuel or oxidizer and binder portion of a
precursor formulation and further on Pile’s teaching to use carbon black with
the recited surface area. See Non-final Act. 2–3. Appellant argues that the
Examiner erred in rejecting claim 1 because “the Examiner’s reasoning is
conclusory and does not constitute an objective reason that supports
modifying the propellant of Boyd to replace its optional powdered carbon
with the carbon black of Pile.” Appeal Br. 17. According to Appellant,
although Pile teaches that using carbon black provides electrical
conductivity to the priming mixture, there is no “objective reason to a person
of ordinary skill in the art to modify Boyd as asserted by the Examiner.”
Appeal Br. 18. Appellant asserts that the Examiner improperly attempts to
remedy the deficiency of Boyd by offering the following reasoning:
Given the differences between electrical conductivity properties
and opacifier or ballistic modifier properties, a person of
ordinary skill in the art would not have an objective reason to
replace an opacifier or ballistic modifier in one composition
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with an electrically conductive component of another
composition, let alone for the reasons asserted by the Examiner,
when there is no teaching or suggestion in the composition to
be modified that electrical conductivity is desirable.
Appeal Br. 18–19.
We are unpersuaded by Appellant’s arguments. As stated by the
Examiner, Boyd and Pile both disclose propellant systems that include
carbon black, which may be modified to achieve the benefit taught by Pile.
Ans. 5 (citing Boyd ¶ 5; Pile ¶¶ 2, 35). In addition, the Examiner’s finding
that Boyd’s carbon black may be substituted with Pile’s carbon black is
further supported by Boyd’s powdered carbon description as “any finely
divided form of carbon, including the various types of carbon black as well
as charcoal.” Boyd ¶ 38. Based on these findings, the preponderance of
evidence supports the Examiner’s determination that it would have been
obvious to one of ordinary skill in the art to substitute Boyd’s carbon black
with Pile’s carbon black, particularly in view of Pile’s teaching that
increasing surface area of the carbon black particles improves electrical
conductivity, thus improving ignitability. Ans. 5 (citing Pile ¶ 35; teaching
surface area of greater than about 1000 m2/g or of about 1475 m2/g).
Thus, as the Examiner properly reasons, the combination of Boyd
with Pile would have been obvious to improve Boyd’s precursor formulation
of the propellant for a gun system with improved and added properties of
Pile for priming mixes of small arms ammunition. Non-final Act. 3; Boyd
¶ 5; Pile ¶¶ 2, 35.
Teaching Away
Appellant advances another reason why the combination is
improper—“modifying the propellant of Boyd, where the powdered carbon
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is used as an opacifier or ballistic modifier, does not flow naturally from
Pile, where the carbon black provides electrical conductivity.” See Appeal
Br. 19. According to Appellant, “[a] person of ordinary skill in the art, upon
reading Boyd and Pile, would be taught away from using the carbon black of
Pile in the composition of Boyd.” Id.
We disagree that Pile teaches away from the proposed combination to
meet claim 1’s subject matter. “A reference does not teach away . . . if it
merely expresses a general preference for an alternative invention but does
not ‘criticize, discredit, or otherwise discourage’ investigation into the
invention claimed.” DePuy Spine, Inc. v. Medtronic Sofamor Danek, Inc.,
567 F.3d 1314, 1327 (Fed. Cir. 2009) (quoting In re Fulton, 391 F.3d 1195,
1201 (Fed. Cir. 2004)). Nevertheless, “even if a reference is not found to
teach away, its statements regarding preferences are relevant to a finding
regarding whether a skilled artisan would be motivated to combine that
reference with another reference.” Polaris Indus. v. Arctic Cat, Inc., 882
F.3d 1056, 1069 (Fed. Cir. 2018) (citing Apple Inc. v. Samsung Elecs. Co.,
839 F.3d 1034, 1051 n.15 (Fed. Cir. 2016) (en banc)).
Here, Appellant does not show how Boyd or Pile “criticize[s],
discredit[s], or otherwise discourage[s]” investigation into claim 1’s subject
matter. See Appeal Br. 20–21; Reply Br. 5–7. To the contrary, as discussed
above, Boyd discloses (1) a solid propellant composition including carbon
black, (2) at least one of a fuel or oxidizer, and (3) a binder. See Boyd ¶¶ 5,
24, 38, 44; Non-final Act. 2; Ans. 5–6. Additionally, Pile teaches the
specific surface area of the carbon black component for achieving improved
conductivity, i.e. improved ignitability, in a propellant ignition system. See
Pile ¶¶ 2, 35; Non-final Act. 3–4; Ans. 5–6. Hence, neither Boyd nor Pile
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teaches away from claim 1’s subject matter, rather, they disclose alternatives
which do not criticize, discredit, or otherwise discourage the solution
claimed.
Unexpected Results
Appellant contends the claimed subject matter would not have been
obvious because “[i]t was unexpected that the propellant compositions
formed from precursor formulations with the high surface area carbon black
exhibited lower relaxation times by several orders of magnitude compared to
the propellant composition formed from precursor formulations with the low
surface area carbon black.” Appeal Br. 21–22. Appellant specifically
argues
The propellant compositions formed from precursor
formulations with the high surface area carbon black exhibited
the lower relaxation times while also exhibiting comparable
breakdown voltages to the propellant compositions formed
from precursor formulations lacking carbon black and to the
propellant composition formed from precursor formulations
with the low surface area carbon black. It was unexpected that
these improvements in electrostatic charge dissipation
properties were achieved without affecting the breakdown
voltage properties, processing, or rheology of the propellant
compositions. For instance, the propellant compositions
formed from precursor formulations with the high surface area
carbon black did not exhibit inferior properties in processing
and rheology.
Appeal Br. 22. Additionally, Appellant asserts:
The Examiner has not identified how or why the propellant
compositions described in ¶¶ [0024]–[0027], Table 1, and FIGs.
1 and 2 of the as-filed application and relied upon as providing
evidence of unexpected results do not establish unexpected and
unobvious differences between the compositions formed from
precursor formulations of the claimed invention and propellant
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compositions formed from precursor formulations including
low surface area carbon black or lacking carbon black.
Appeal Br. 23.
The Examiner responds by stating that the proposed combination of
Boyd with Pile would result in high surface area carbon black included in
the propellant composition “and thus would be expected to have the same or
similar properties relating to relaxation times and electrostatic charge.” Ans.
6. The Examiner further explains “Pile discloses that the inclusion of the
high surface area carbon black results in improved electrical conductivity.”
Ans. 7 (citing Pile ¶¶ 35, 36). In addition, the Examiner finds Appellant’s
referenced unexpected results include additional components, therefore the
properties are not commensurate in scope with the claims. Id.
Appellant does not persuade us that the submitted evidence of
unexpected results are sufficient to outweigh the prior art evidence
of obviousness presented by the Examiner. See Appeal Br. 22–23 (citing
Spec. ¶¶ 24–27, Table 1, Figs. 1, 2); Reply Br. 7–9. In particular, we agree
with the Examiner’s determination that Appellant’s evidence of unexpected
results is not commensurate in scope with the subject matter encompassed
by claim 1. See Ans. 7.
The Specification describes a comparison of different combinations of
surface area and the relaxation time. See Spec. ¶ 24. The Specification
further describes the propellant composition including high surface carbon
black, lacking carbon black, and low surface carbon black. See Spec. ¶ 26,
Table 1. Although we acknowledge the Specification’s assertion regarding
the unexpectedness of the results shown in Table 1 and paragraphs 24–27 of
the Specification, Appellant’s claim 1 encompasses specific surface area and
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weight ranges. See Appeal Br. 30 (representative claim 1 recites carbon
black having a surface area of at least about 1,200 m2/g, and about 0.05% by
weight to about 0.25% by weight of a total weight of the propellant
composition). Because the data supporting the Specification’s assertion of
unexpectedness is limited to compositions containing relatively low surface
area, whereas Appellant’s claim 1 encompasses surface area significantly
higher than those upon which the assertions of unexpectedness are based, we
agree with the Examiner that the evidence of unexpectedness advanced by
Appellant is not commensurate in scope with the subject matter recited in
claim 1.
Additionally, the cited references disclose the required carbon black
having a surface area of at least 1200 m2/g (Pile ¶ 35; surface area of about
1475 m2/g). Moreover, Pile discloses “carbon black can be utilized in
various amounts, including from about 0.5% to about 2% carbon black,
although amounts outside this range can function also.” Pile ¶ 34; see also
Boyd ¶ 38 (carbon at less than 2% weight). It is well settled that the
disclosure of a range in the prior art which substantially overlaps a claimed
range is generally sufficient in and of itself to render the claimed range
prima facie obvious. See In re Woodruff, 919 F.2d 1575, 1578 (Fed. Cir.
1990); In re Wertheim, 541 F.2d 257, 262 (CCPA 1976); In re Malagari,
499 F.2d 1297, 1302 (CCPA 1974). This is especially true here, where one
having ordinary skill in the art would have been led to a precursor
formulation of a propellant composition wherein carbon black surface area
and weight fall within the recited values as suggested by the combination of
Boyd and Pile and as determined by the Examiner. Non-final Act. 2–3.
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Summary for Claim 1
In sum, for the reasons discussed, Appellant does not persuade us that
the Examiner erred in determining that Boyd and Pile would have suggested
the subject matter of claim 1. In our view, the claimed subject matter
exemplifies the principle that “[t]he combination of familiar elements
according to known methods is likely to be obvious when it does no more
than yield predictable results.” KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398,
416 (2007). For the reasons discussed, Appellant also does not persuade us
that it has advanced evidence of unexpected results sufficient to outweigh
the prior art evidence of obviousness presented by the Examiner in relation
to claim 1.
CLAIMS 8, 9, and 14
Appellant does not argue patentability separately for claims 8, 9, and
14 and relies on the arguments presented for claim 1. See Appeal Br. 24.
Thus, we sustain the U.S.C § 103 rejection of these claims for the same
reasons as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
CLAIM 21
Appellant contends “Boyd and Pile, alone or in combination, do not
teach or suggest the element in claim 21 of a precursor formulation of a
propellant composition consisting of, inter alia, ‘at least one of a bonding
agent, a plasticizer, or a crosslinking agent.’” Appeal Br. 24. According to
Appellant, neither reference teaches or suggests this feature because Boyd
includes iron oxide, silica, ammonium perchlorate, and a crosslinkable
binder and Pile teaches that the required primary oxidizer is a primary
explosive and bismuth oxide, which are not characterized as a bonding
agent, a plasticizer, or a crosslinking agent. Appeal Br. 24–25. Appellant
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further presents arguments regarding the reason to combine Boyd and Pile
and the claimed invention exhibiting unexpected results, which we find
unpersuasive of error for the reasons addressed above with respect to claim
1. See Appeal Br. 26–28.
The Examiner responds by stating that Boyd discloses “[o]ther
components which may be included in the compositions of the invention
include powdered carbon, powdered aluminum, plasticizers, bonding agents
and antioxidants.” Ans. 6 (citing Boyd ¶ 24). The Examiner finds Boyd’s
claim 44 describes a curing agent used for crosslinking the binder, which is
the same as the recited crosslinking agent. Id. Regarding the closed claim
language “consisting of,” the Examiner determines that the claim is directed
to a “precursor” of a propellant and that additional components added to
make a final propellant are not excluded by the claim. Id.
We are persuaded by Appellant that the Examiner reversibly erred in
rejecting claim 21 over the combination of Boyd and Pile. The Examiner
correctly describes claim 21 as being directed to a “precursor” rather than a
final propellant composition, but does not make any further findings
regarding whether Boyd’s iron oxide and silica or Pile’s primary explosive
and bismuth oxide are “precursor” components or additional components
added to a “precursor” of a final propellant composition. In the absence of
such findings, we are constrained to reverse the rejection of claim 21 over
the combination of Boyd and Pile.
Summary for Claim 21
For the reasons discussed above, Appellant’s arguments have
persuaded us that the Examiner erred in rejecting claim 21 for obviousness
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based on Boyd and Pile. Thus, we reverse the U.S.C. § 103 rejection of
claim 21.
CLAIMS 15 and 17–20
Appellant does not argue patentability separately for claims 15 and
17–20 and relies on the arguments presented for claim 1. See Appeal Br. 28.
Thus, we sustain the U.S.C. § 103 rejection of these claims for the same
reasons as claim 1. See 37 C.F.R. § 41.37(c)(1)(iv).
REJOINDER OF CLAIMS 15, 17–20
Appellant’s assertion regarding the rejoinder of claims 15 and 17–20
upon the allowance of generic claim 1, is not ripe to be considered before
this panel. We leave it to the Examiner to consider the propriety of the
rejoinder of claims after allowable subject matter is determined.

DECISION SUMMARY
In summary:
Claims
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–5, 7–9,
12–14, 21 103 Boyd, Pile
1–5, 7–9,
12–14 21
Overall
Outcome
1–5, 7–9,
12–14 21
TIME PERIOD FOR RESPONSE
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). See
37 C.F.R. § 41.50(f).
AFFIRMED IN PART