11165734 (B.P.A.I. Mar. 20, 2012)

Ex Parte Gash et al

Board of Patent Appeals and InterferencesMar 20, 2012

11165734 (B.P.A.I. Mar. 20, 2012)

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. 11/165,734 06/24/2005 Alexander E. Gash IL-10837 5856 86571 7590 03/21/2012 LLNS / John P. Wooldridge John H. Lee, Assistant Laboratory Counsel L-703, P.O Box 808 Livermore, CA 94551 EXAMINER ZHU, WEIPING ART UNIT PAPER NUMBER 1734 MAIL DATE DELIVERY MODE 03/21/2012 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 BOARD OF PATENT APPEALS AND INTERFERENCES ____________ Ex parte ALEXANDER GASH, JOE SATCHER, and RANDALL SIMPSON ____________ Appeal 2010-002617 Application 11/165,734 Technology Center 1700 ____________ Before TERRY J. OWENS, KAREN M. HASTINGS, and MICHAEL P. COLAIANNI, Administrative Patent Judges. PER CURIAM DECISION ON APPEAL Appeal 2010-002617 Application 11/165,734 2 Appellants appeal under 35 U.S.C. § 134 from the Examiner’s rejection of claims 1-18 under 35 U.S.C. § 103(a) as obvious over the combined prior art of Gash1 and Crowley2.3 We adopt the Examiner’s findings of fact (Answer 3-8), the preponderance of which support the obviousness rejection and the conclusion of law articulated by the Examiner. Appellants’ conclusory argument that Gash only teaches production of nanocomposites (Br. 4) is not persuasive absent any reasoning or evidence why one of ordinary skill in the art would not have, using no more than ordinary creativity, predictably reduced the iron oxide nancomposites of Gash in the presence of an inert carrier gas to make a pyrophoric metal as suggested by the overall teachings of Crowley. Appellants’ argument that Crowley teaches away from the reduction of iron oxide particles such as those of Gash (Br. 5) is unavailing for the reasons aptly pointed out by the Examiner (Answer 7, 8; see also Final Rejection 3-4). See, In re Harris, 409 F.3d 1339, 1341 (Fed. Cir. 2005) (whether a reference teaches away from a claimed invention is a question of fact); see also Syntex (U.S.A.) LLC v. Apotex, Inc. 407 F.3d 1371, 1380 (Fed. Cir. 2005); In re Gurley, 27 F.3d 551, 553 (Fed. Cir. 1994) (a known or obvious device or method “does not become patentable simply because it has been described as somewhat inferior to some other device [or method] for the same use.”). 1 “Energetic Nanocomposites with Sol-gel Chemistry: Synthesis, Safety, and Characterization”, submitted to 29th International Pyrotechnic Seminar, Westminster, Co., July 14-19, 2002 2 US 2,730,441 issued January 10, 1956. 3 Appellants do not separately argue any of the claims, and thus claims 1-18 stand or fall together. Br. 4-5. Appeal 2010-002617 Application 11/165,734 3 The decision of the Examiner is affirmed. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136(a). ORDER AFFIRMED sld