Ex Parte Hurley

Board of Patent Appeals and Interferences

Apr 5, 2012

10998220 (B.P.A.I. Apr. 5, 2012)

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.
10/998,220 11/26/2004 Peter J. Hurley 53972/JDC/S1042 2440
23363 7590 04/06/2012
CHRISTIE, PARKER & HALE, LLP
PO BOX 29001
Glendale, CA 91209-9001
EXAMINER
MCDONOUGH, JAMES E
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
04/06/2012 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 PETER J. HURLEY
________________

Appeal 2010-007975
Application 10/998,220
Technology Center 1700
________________

Before CATHERINE Q. TIMM, ROMULO H. DELMENDO, and
GEORGE C. BEST, Administrative Patent Judges.

BEST, Administrative Patent Judge.

DECISION ON APPEAL
The Examiner finally rejected claims 10, 11, 13, and 14 of
Application 10/998,220.1 Appellant appeals pursuant to 35 U.S.C. § 134. We
have jurisdiction pursuant to 35 U.S.C. § 6(b).
For the reasons set forth below, we REVERSE.

1 The Examiner withdrew the final rejection of claim 12. Ans. 2.
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Background
The ’220 application teaches and seeks to claim a method for
producing a self-remediating projectile. In particular, the ’220 application
teaches coating a metal projectile with a combination of a water-soluble or
biodegradable polymer and a remediation agent. Spec. abstract at 21.
More specifically, the ’220 application teaches that metal (most
commonly lead, but also antimony or other hazardous materials) from spent
projectiles leaches into the soil and water, necessitating environmental
remediation. Id. at 1.
To minimize or overcome this problem, the ’220 application teaches
that the metal projectile can be coated with a combination of a water-soluble
polymer and a remediation agent. Id. at 4. This coating remains on the
projectile after it is fired, id. at 13, and upon contact with water, the polymer
dissolves, releasing the remediation agent, id. at 13-14. The remediation
agent is chosen such that it reacts with the dissolved metal from the
projectile to form a water-insoluble salt. Id. at 8-9. It is believed that over
time, this results in the formation of a cement-like structure that surrounds
the projectile, encapsulating the metal and rendering inaccessible to the
environment. Id. at 14-15.
The projectile is coated in the following manner: The polymer is
dissolved in an organic solvent or a mixture of organic solvents, and the
remediation agent is added. Id. at 12. This mixture is then used to coat the
projectile by a tumble rolling technique, and the projectiles are then allowed
to dry. Id.
Claim 10 is the only independent claim on appeal and is reproduced
below:
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10. A method for manufacturing a self-remediating
projectile, comprising:
tumble rolling a metal projectile in a mixture of organic solvent,
remediation agent, and water-soluble and/or biodegradable
polymer; and
drying the projectile.
Issue
Whether the Examiner reversibly erred in rejecting claims 10, 11, 13
and 14 of the ’220 application as obvious over U.S. Patent No. 6,688,811 B2
(“Forrester,” Feb. 10, 2004) in view of U.S. Patent No. 6,838,504 B1
(“Webster,” issued Jan 4, 2005) further in view of U.S. Patent No. 6,036,996
(“Martin,” issued March 14, 2000).
We answer this question in the affirmative.
Prior Art
Forrester. The Examiner cited Forrester for its teaching of a method
to reduce lead leaching from a lead projectile impact area. Ans. 2. In
particular, Forrester teaches that the amount of lead that leaches from the
impact area of a shooting range, for example, can be reduced by the pre-
application of dry granular lead stabilizing agents. Abstract; col. 3, l. 39-col.
4, l. 5. Forrester teaches that the application of any of a number of lead
stabilizing agents to the soil has the effect of reducing the amount of
leachable lead due to formation of insoluble lead precipitates. Col. 3, l. 59-
col. 4, l. 5.
Forrester also discusses another method of reducing the leachable lead
by contacting the lead projectiles with at least one phosphate in the presence
of a complexing agent selected “to generate specific apatite minerals on the
projectile.” Col. 4, ll. 6-14. Forrester’s disclosure, however, does not specify
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whether the contacting of the projectile is to happen before or after firing of
the projectile.
Webster. The Examiner cited Webster for its teaching of a variety of
remediation agents in combination with a carrier polymer. Ans 3.
Specifically, Webster teaches the design and development of a variety of
hazardous metal-containing devices that include an integrated system for
fixing soluble metal ions (including lead) in situ, thus preventing leaching.
Col. 4, ll. 52-67. These integrated systems include the encapsulation of
fixation agents in degradable polymers. Col. 6, ll. 45-58. The degradable
polymer is selected “to permit the protection of the fixation reagents in a
dormant (unreacted) state, inhibiting the release of active fixation reagents,
while also permitting degradation of the barrier at an appropriate time so that
the fixation reagent in the matrix may be released or made accessible to
solubilized metals.” Col. 6, ll. 61-66. One particular degradable polymer
taught by Webster is a polyvinyl acid-polyvinyl acetate co-polymer. Col. 19,
ll. 14-19. This polymer can be cast from a solution of isopropanol and ethyl
acetate. Col. 21, ll. 9-19.
Webster does not teach the use of a heavy metal fixing-integrated
system on any sort of projectile.
Martin. The Examiner cited Martin for its teaching of the use of a
tumble roll milling procedure to coat metal projectiles. Ans. 3. In particular,
Martin teaches that tumble roll milling of projectiles along with steel shot
and tungsten sulfide powder results in projectile acquiring a coating of the
tungsten sulfide, which serves as a lubricant for the projectile when it is
fired. See, e.g., col. 3, ll. 7-15; col. 56, ll. 20-47.
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Martin does not teach a milling process which involves the use of a
solvent and a drying step.
Discussion
Appellant presents separate arguments in support of two groups of
claims: (1) Claims 10, 13, and 14; and (2) Claim 11. Br. 2.
Claims 10, 13, and 14. Relying on the analysis set forth in Graham v.
John Deere Co., 338 U.S. 1 (1966), Appellant argues that the differences
between the prior art and the claimed invention are such that the Examiner
has not presented a prima facie case of unpatentability. Br. 3-5. In particular,
Appellant argues that the Examiner has not identified a reference that
teaches coating a projectile with a degradable polymer and a lead fixing
agent. Id. at 5. Furthermore, according to Appellant, there are differences
between the claimed wet milling process and the dry milling process
described in Martin. Id.
In response, the Examiner emphasizes the fact that the rejection is
based upon a combination of references. Ans. 5-7. In the Examiner’s
opinion, a person of ordinary skill in the art would have had reason to
combine the polymer coatings taught in Webster to coat a projectile through
the use of tumble roll milling, as taught in Martin. Id. at 6-7.
We cannot sustain the Examiner’s rejection of these claims for two
reasons. First, the prior art neither teaches nor suggests the application of a
polymer and remediation agent coating to a projectile. Forrester does contain
a passage that states: “In another method, the lead projectiles are contacted
with at least one phosphate in the presence of a complexing agent selected to
generate specific apatite minerals on the projectile.” Forrester, col. 4, ll. 6-9.
This passage is ambiguous as to when the projectile is brought into contact
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with the phosphate and complexing agent. Read, however, in the context of
the entire reference, it is clear that the passage refers to post-firing contact.
For example, Forrester describes an embodiment of his invention as follows:
Preferably, the dry stabilizing agent is a granular phosphate that
resists solubility in rain water under static conditions until such
time the granular phosphate is impacted by the projectile at
which time the granular phosphate is shattered into smaller
fines which increases soluble surface area and thus increases
dosage of phosphate to the lead exposed area.
Col. 3, ll. 42-48. Read as a whole, therefore, Forrester does not suggest the
coating of a projectile with a degradable polymer and a remediation agent.
Neither of the other references teach or suggest such a step.
Second, the claimed wet milling process is not taught or suggested in
any of the references or by the combination of the references identified by
the Examiner. The Martin reference cited by the Examiner teaches a dry
milling process in which steel shot is believed to physically pound a dry
lubricating powder into the surface of the projectile. Martin, col. 4, ll. 16-23.
Martin contains no suggestion to use a wet tumble roll milling process to
adhere material to the outside surface of a projectile. Indeed, Martin teaches
away from the use of rotary tumblers for coating projectiles. Id. at col. 4, l.
64-col. 5, l. 6 (explaining that using a rotary tumbler for plating deforms the
shape of the projectile).
For these two reasons, we find that the Examiner has not established a
prima facie case of obviousness. We, therefore, cannot sustain the
Examiner’s rejection of claims 10, 13, and 14.
Claim 11. Because we did not sustain the Examiner’s rejection of
claim 10, upon which claim 11 depends, we need not address the additional
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arguments raised by Appellant in support of this claim. For the reasons set
forth above, we also cannot sustain the Examiner’s rejection of claim 11.
Conclusion
After review and on this record, we cannot sustain the Examiner’s
rejection of claim 10, 11, 13, and 14 because the Examiner failed to
demonstrate a prima facie case of obviousness. We therefore reverse the
Examiner’s decision.
REVERSED

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