Ex Parte Burns et al

Patent Trial and Appeal Board

Jan 9, 2013

11153720 (P.T.A.B. Jan. 9, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/153,720 06/15/2005 Sean P. Burns 5702-01044 9705
46510 7590 01/09/2013
L.C. BEGIN & ASSOCIATES, PLLC
510 HIGHLAND AVENUE
PMB 403
MILFORD, MI 48381
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
01/09/2013 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 PATENT TRIAL AND APPEAL BOARD
____________

Ex parte SEAN P. BURNS and
PARESH S. KHANDHADIA
____________

Appeal 2011-011523
Application 11/153,720
Technology Center 1700
____________

Before CATHERINE Q. TIMM, LINDA M. GAUDETTE, and
GRACE KARAFFA OBERMANN, Administrative Patent Judges.

GAUDETTE, Administrative Patent Judge.

Appeal 2011-011523
Application 11/153,720

2
DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s decision1
finally rejecting claims 1-12 under 35 U.S.C. §103(a) as unpatentable over Chang
(US 3,954,528, issued May 4, 1976) or Bley (US 6,024,812, issued Feb. 15,
2000).2 We have jurisdiction under 35 U.S.C. § 6(b).
We REVERSE.
Appellants’ arguments are directed to limitations common to the
independent claims. (See generally, Br. 13-45.) For reference, claim 1 is
reproduced below from the Claims Appendix to the Appeal Brief:
1. A gas generant composition formed from a method
consisting of the steps of:
chilling a predetermined amount of nitric acid to 0-20°C within
a vessel;
adding a fuel component selected from the group consisting of
nitrourea, 5-aminotetrazole, diaminotriazole, urea, azodicarbonamide,
hydrazodicarbonamide, semicarbazide, carbohydrazide, biuret, 3,5-
diamino-1,2,4-triazole, dicyandiamide, and 3-amino-1,2,4-triazole to
the nitric acid thereby forming a mixture;
adding at least one oxidizer to the mixture;
stirring the mixture to form a homogeneous wet paste;
forming the paste into it desired shape; and
drying the formed paste to form said gas generant composition
consisting essentially of a nitrated fuel component formed from said
fuel component and said at least one oxidizer.

1 Final Office Action mailed Sep. 27, 2010 (“Final”).
2 Appeal Brief filed Jan. 13, 2011 (“Br.”).
Appeal 2011-011523
Application 11/153,720

3
The claims are drafted in product-by-process format. “If the product in a
product-by-process claim is the same as or obvious from a product of the prior art,
the claim is unpatentable even though the prior product was made by a different
process.” In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985) (citations omitted).
The Examiner finds Chang and Bley disclose gas generating compositions
comprising “5-aminotetrazole nitrate and ammonium nitrate.” (Ans. 3 3-4.)
Appellants argue, and we agree, the transitional phrase “consisting of,” which
appears in the preamble of each of the independent claims, precludes forming the
claimed composition using an additional step or steps of adding components such
as triaminoguanidine and nitroaminoguanidine. (See, e.g., Br. 15 (as to Chang), 31
(as to Bley).) The Examiner acknowledges triaminoguanidine and
nitroaminoguanidine are present, respectively, in Chang’s and Bley’s
compositions, but maintains “[i]t would have been obvious to one having ordinary
skill in the art at the time the invention was made to use the composition of Chang
[or Bley] without the additional disclosed fuels in order to optimize the
performance of the gas generating composition.” (Ans. 3-4.)
An obviousness determination requires that a skilled artisan would have
perceived a reasonable expectation of success in making the invention in light of
the prior art. Amgen Inc. v. F. Hoffman-LA Roche Ltd., 580 F.3d 1340, 1362 (Fed.
Cir. 2009) (citing In re Kubin, 561 F.3d 1351, 1360 (Fed. Cir. 2009)).
Appellants direct us, e.g., to column 1, lines 55-59 of Chang (Br. 15), which
read: “Although, HMX is the preferred oxidant of the instant composition, other
oxidants, which are traditionally employed for this purpose and are compatible
with the TAGN propellant ingredient of this invention, may also be employed.”
(Emphasis added.) Appellants cite column 2, lines 12-13 of Bley (Br. 31), which

3 Examiner’s Answer mailed Mar. 24, 2011.
Appeal 2011-011523
Application 11/153,720

4
read: “The propellants in accordance with the invention contain, as the main
component, nitroaminoguanidine.” (Emphasis added.) The relied-upon
disclosures in Chang and Bley support Appellants’ contention that
triaminoguanidine (“TAGN”) and nitroaminoguanidine are “essential
ingredient[s]” of Chang’s and Bley’s compositions, and one of ordinary skill in the
art would not have had a reasonable expectation of success in eliminating these
components from the Chang and Bley compositions. (Br. 15, 31.)
In sum, Appellants have persuasively argued the Examiner’s fact finding and
reasoning is insufficient to support a prima facie case of obviousness as to
appealed claims 1-12.
REVERSED
bar