Ex Parte Barrett et al

Board of Patent Appeals and Interferences

Apr 24, 2007

10352542 (B.P.A.I. Apr. 24, 2007)

The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte G. DEAN BARRETT and
JOHN A. CONKLING
____________

Appeal 2007-1254
Application 10/352,542
Technology Center 1700
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Decided: April 24, 2007
____________

Before THOMAS A. WALTZ, CATHERINE Q. TIMM, and
LINDA M. GAUDETTE, Administrative Patent Judges.

WALTZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on an appeal under 35 U.S.C. § 134 from the
Primary Examiner’s final rejection of claims 30, 32-36, 40, 45, 82, 84-86,
89-94, and 106-108 (claims 96-102 were cancelled in an amendment after
the Final Rejection; Br. 2).1 The only other claims in this application are

1 We refer to and cite from Appellants’ Substitute Brief dated Oct. 6, 2006.
Appeal 2007-1254
Application 10/352,542

claims 1-7, 10-29, 37-39, 41-44, 46-81, 87-88, 103-105, and 109-117, which
stand withdrawn from further consideration as directed to a non-elected
invention (Br. 2; Final Office Action dated Jul. 6, 2005, page 2). We have
jurisdiction pursuant to 35 U.S.C. § 6.
According to Appellants, the invention is directed to black powder
substitutes free of corrosive sulfur compounds, where the propellant
composition comprises a sulfur free deflagrating gas generating formulation
including oxidizing and reducing agents, and a first ignition aid of sodium
nitrobenzoate salt (Br. 3). Independent claim 30 and dependent claim 32 are
illustrative of the invention and are reproduced below:

30. A propellant composition comprising a sulfur free deflagrating
gas generating formulation including oxidizing and reducing agents
selected from the group consisting of carbon, sugars, nitrate salts,
perchlorate salts, benzoate salts, and mixtures thereof, and a first
ignition aid of sodium nitrobenzoate salt.

32. The propellant composition as in Claim 30, said sulfur free
deflagrating gas generating formulation including oxidizing and
reducing agents selected from the group consisting of carbon, lactose,
potassium nitrate, potassium perchlorate, sodium benzoate, and
mixtures thereof.

The Examiner has relied on the following prior art reference as
evidence of obviousness:
Pawlak US 4,128,443 Dec. 5, 1978
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Application 10/352,542

ISSUES ON APPEAL
Claims 30, 32-36, 40, 45, 82, 84-86, 89-94, and 106-108 stand
rejected under 35 U.S.C. § 103(a) as unpatentable over Pawlak (Answer 4).2
Appellants contend that Pawlak does not mention the compound
sodium nitrobenzoate, does not eliminate sulfur, teaches that ammonium
salts are not equivalent to alkali metal salts (i.e., sodium, potassium, and
lithium salts), and teaches the use of ammonium nitrobenzoate only as a
fuel, not as the ignition aid as presently claimed (Br. 4-10).
The Examiner contends that Pawlak teaches a propellant gas-
generating composition containing oxidizing agents and an organic
carboxylic acid or oxidizable derivative thereof, specifically teaching that
alkali metal or ammonium salts of this latter class of compounds may be
used, while disclosing the compound ammonium m-nitrobenzoate (Answer
4-5).
Accordingly, the issue presented in this appeal is as follows: does the
specific disclosure of ammonium m-nitrobenzoate as a fuel in the propellant
composition of Pawlak, with a teaching that alkali metal salts can also be
used, render obvious the ignition aid sodium nitrobenzoate salt in the
claimed propellant composition?
We determine that the Examiner has established a prima facie case of
obviousness in view of the reference evidence, which prima facie case has
not been adequately rebutted by Appellants’ arguments. Therefore, we

2 We refer to and cite from the Examiner’s Answer dated Nov. 24, 2006.
We also note that the Examiner inadvertently included claims 8 and 9 in the
rejection (Answer 4). However, claims 8-9 have been cancelled (Br. 2).
Accordingly, we only consider the claims as listed above.
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Appeal 2007-1254
Application 10/352,542

AFFIRM the sole ground of rejection in this appeal essentially for the
reasons stated in the Answer, as well as those reasons set forth below.
OPINION
We determine the following factual findings from the record in this
appeal:
(1) Pawlak discloses gas-forming deflagrating compositions
comprising approximately 30-82.5 parts by weight of an oxygen-
containing oxidizing agent such as inorganic nitrates, inorganic
perchlorates, inorganic chlorates, or inorganic permanganates,
approximately 14.5-45 parts by weight of an organic carboxylic
acid or oxidizable derivative, and approximately 1.0 to 25.0 parts
by weight of water (col. 1, ll. 5-8; col. 2, l. 30-col. 3, l. 21; Answer
4);
(2) Pawlak teaches that “[w]e have found that a wide range of
derivatives are useful for the purpose of our invention; for
example, ammonium and metallic salts of said carboxylic acids,
amides, esters…” (col. 3, l. 66-col. 4, l. 4);
(3) Pawlak teaches that “[p]articularly preferred salts of said
carboxylic acids are the ammonium and alkali metallic salts of
aromatic carboxylic acids as above defined,” specifically listing
ammonium m-nitrobenzoate as a useful fuel for the deflagrating
compositions of the invention (col. 4, ll. 10-18); and
(4) Pawlak teaches one embodiment where the above-described
compositions are mixed with the normal ingredients and
proportions of black powder (i.e., containing 10 parts of sulfur)
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Appeal 2007-1254
Application 10/352,542

but exemplify many gas-generating deflagrating compositions
without sulfur (col. 4, ll. 27-35; Examples 3-8 at col. 7, ll. 5-40).
“Even when obviousness is based on a single prior art reference, there
must be a showing of a suggestion or motivation to modify the teachings of
that reference.” In re Kotzab, 217 F.3d 1365, 1370, 55 USPQ2d 1313, 1316-
17 (Fed. Cir. 2000). An express suggestion to substitute one equivalent for
another need not be present to render such a substitution obvious. See In re
Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982). “These terms
merely set forth the intended use for, or a property inherent in, an otherwise
old composition. As the board pointed out, such terms do not differentiate
the claimed composition from those known to the prior art. [Citations
omitted].” In re Pearson, 494 F.2d 1399, 1403, 181 USPQ 641, 644 (CCPA
1974).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness in view of the reference evidence, which
prima facie case has not been adequately rebutted by Appellants’ arguments.
As shown by factual findings (1) and (4) listed above, we determine that
Pawlak discloses a sulfur free deflagrating gas generating formulation
including oxidizing and reducing agents within the scope of claims 30 or 32
on appeal, as well as teaching the inclusion of ammonium m-nitrobenzoate
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Appeal 2007-1254
Application 10/352,542

salt in the deflagrating composition.3 Contrary to Appellants’ arguments
(Br. 6-8 and 10), we determine that Pawlak clearly teaches the equivalence
of ammonium and alkali metal salts for the carboxylic acid derivative
component, including esters such as benzoates (see factual findings (2) and
(3) listed above). Accordingly, we determine that one of ordinary skill in
this art, following the teachings of Pawlak, would have been led to the
sodium m-nitrobenzoate salt as required by claims 30 or 32 on appeal. The
denomination of the sodium nitrobenzoate salt as an “ignition aid” in claim
30 on appeal instead of a “fuel” as taught by Pawlak does not differentiate
the claimed composition from that known in the prior art since these terms
only refer to the intended use. (See Pearson, supra; Answer 6).
For the foregoing reasons and those stated in the Answer, we
AFFIRM the rejection of claims 30, 32-36, 40, 45, 82, 84-86, 89-94, and
106-108 under § 103(a) over Pawlak.
The decision of the Examiner is affirmed.

3 Appellants state that claims 32 and 45 should be considered in this appeal
but only present a specific argument for the separate patentability of claim
45 (Br. 4 and 10). With regard to this argument, we determine that the
amount of nitrobenzoate salt recited in claim 45 overlaps with or varies by
such a small amount (12% vs. 14 parts by weight) over Pawlak that one of
ordinary skill in the art would have expected similar results and properties.
See Titanium Metals Corp. of America v. Banner, 778 F.2d 775, 781,
227 USPQ 773, 779 (Fed. Cir. 1985).
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Appeal 2007-1254
Application 10/352,542

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) (2006).
AFFIRMED

tf/ls

Joseph B. Bowman
5441 East Gleneagles Drive
Tucson, AZ 85718-1805
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