Ex Parte Simpson et al

Board of Patent Appeals and Interferences

Aug 9, 2011

09481043 (B.P.A.I. Aug. 9, 2011)

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.
09/481,043 01/11/2000 RANDALL L. SIMPSON IL-10127B 5097
78980 7590 08/09/2011
LLNL/Zilka-Kotab
Lawrence Livermore National Laboratory
L-703, P.O. Box 808
Livermore, CA 94551
EXAMINER
FELTON, AILEEN BAKER
ART UNIT PAPER NUMBER
1731
MAIL DATE DELIVERY MODE
08/09/2011 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 RANDALL L. SIMPSON, RONALD S. LEE,
THOMAS M. TILLOTSON, LAWRENCE W. HRUBESH,
and ROSALIND W. SWANSIGER
________________

Appeal 2011-008747
Application 09/481,043
Technology Center 1700
________________

Before EDWARD C. KIMLIN, BRADLEY R. GARRIS, and BEVERLY A.
FRANKLIN, Administrative Patent Judges.

KIMLIN, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal from the final rejection of claims 1, 26-38, 40-41,
and 45. We have jurisdiction under 35 U.S.C. § 6(b).
Claim 1 is illustrative:
1. A process for producing solid energetic materials,

said process utilizing sol-gel chemistry including the extraction of a
liquid phase from a gel and incorporating at least one energetic material
during at least one of a solution formation, a gelation of the solution, and the
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Application 09/481,043

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extracting of liquid from the gel, whereby producing a solid energetic
material, wherein the energetic material includes a fuel and an oxidizer.

The Examiner relies upon the following references in the rejection of
the appealed claims (Ans. 2-3):
Benziger 4,481,371 Nov. 6, 1984
Sayles 4,952,341 Aug. 28, 1990

Larry L. Hench & Jon K. West, The Sol-Gel Process, in 90 Chemistry
Reviews 1990 33-72 (American Chemical Society, Jan. 1990) (hereafter
“Hench”).

A Shared Award in Aerogel Process Technology, in Science and Technology
Review November/December 1995 22-25 (1995) (hereafter “Science and
Technology Review”).

Applicants’ Admitted Prior Art (AAPA), Spec. 13, ll. 5-23.

Appellants’ claimed invention is directed to a process for making
solid energetic materials comprising a fuel and an oxidizer that find utility as
explosives and propellants.
Appealed claims 1, 26-38, 40-41, and 45 stand rejected under 35
U.S.C. § 103(a) as being unpatentable over Sayles or Benziger in view of
Hench, Science and Technology Review, and the AAPA found in
Appellants’ Specification. Claims 1, 32, and 45 stand rejected under 35
U.S.C. § 102(b) as being anticipated by Science and Technology Review.
We have thoroughly reviewed the respective positions advanced by
Appellants and the Examiner. In so doing, we concur with Appellants that
the Examiner’s rejections are not sustainable.
We consider first the Examiner’s § 103 rejection. There is no dispute
that Sayles and Benziger are directed to making solid energetic materials but
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Application 09/481,043

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provide no teaching of using sol-gel processing to make the materials. There
is also no dispute that the sol-gel processing techniques employed by
Appellants were known in the art at the time of filing the present application,
and that the pertinent references cited by the Examiner provide no teaching
of utilizing such techniques to make solid energetic materials. It is the
Examiner’s position that since Sayles and Benziger teach that it was known
in the explosives art to use high surface areas and porosity to improve the
burn rate, it would have been obvious to use sol-gel processing to make the
material since it was known that such processing produces high surface area
and porosity.
The flaw in the Examiner’s position is that it has not been
demonstrated that there is any similarity in the type of materials used in
conventional sol-gel processing and the materials used in the processes of
Sayles, Benziger and Appellants. Without such nexus, the Examiner has, at
best, given a reason for experimentation by one of ordinary skill in the art to
explore the viability of preparing high energy materials, such as explosives,
by sol-gel techniques. Such an invitation falls short of the requisite
reasonable expectation of success for establishing obviousness. We note
that while Science and Technology Review teaches that sol-gel techniques
can be used to make materials having a variety of applications, such as
electronics, optics, thermopane window inserts, solar panels, toys, insulation
tiles, etc., the reference provides no suggestion that sol-el processing can be
used to make solid energetic materials.
We now turn to the Examiner’s § 102 rejection. The Examiner
explains that Science and Technology Review discloses a sol-gel process
that uses carbon as the fuel and air in the aerogel as an oxidizer. However,
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Application 09/481,043

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we agree with Appellants that when the claim 1language, “solid energetic
material, wherein the energetic material includes a fuel and an oxidizer”, is
read in light of the present Specification, and not in a vacuum, the rejected
claims require that both the fuel and the oxidizer be a solid material.
Manifestly, air is not a solid.
In conclusion, based on the foregoing, we are constrained to reverse
the Examiner’s rejections.

REVERSED

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