Ex Parte Smith

Board of Patent Appeals and Interferences

Sep 14, 2011

10898189 (B.P.A.I. Sep. 14, 2011)

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte KJELL-TORE SMITH
______________

Appeal 2010-002023
Application 10/898,189
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
BEVERLY A. FRANKLIN, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON APPEAL
Applicant appeals to the Board from the decision of the Primary
Examiner finally rejecting claims 1, 2, and 6-9 in the Office Action mailed
October 18, 2008. 35 U.S.C. §§ 6 and 134(a) (2002); 37 C.F.R. § 41.31(a)
(2008).
We affirm the decision of the Primary Examiner.
Claim 1 illustrates Appellant’s invention of a pressable explosive
composition made by the water-slurry process, and is representative of the
claims on appeal:
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1. A pressable explosive composition made by the water-slurry
process having increased explosive pressure, wherein
- it comprises between 45 and 95% by weight explosive crystals and
between 5 and 55% by weight aluminum powder passivated by being coated
with a layer of isostearic acid, and
- a binder that is chosen such that the mixture satisfies the
requirements for low-sensitivity explosives (IM requirements).
Appellant requests review of the grounds of rejection under 35 U.S.C.
§ 103(a) advanced on appeal by the Examiner: claims 1 and 2 over Kehren
(US 4,088,518) in view of Kondis (US 3,781,177); and claims 6-9 over
Kehren in view of Kondis, further in view of Stec III (US 6,238,501 B1).
App. Br. 5; Ans. 3.
Appellant argues the first ground of rejection on claims 1 and 2, and
argues the second ground of rejection on claim 6. Br. 7-10. Thus, we decide
this appeal based on claims 1, 2, and 6. 37 C.F.R. § 41.37(c)(1)(vii) (2008).
Opinion
We are of the opinion Appellant’s arguments do not establish that the
preponderance of the evidence in the totality of the record weighs in favor of
the nonobviousness of the claimed pressable explosive composition made by
the water-slurry process encompassed by claims 1, 2, and 6. In this respect,
we are in agreement with the Examiner’s analysis of the evidence in the
references and the findings of fact and conclusions of law stated in the
Answer, to which we add the following for emphasis in response to
Appellant’s arguments. Ans. 3-11; Br. 7-10.
I.
As a matter of claim interpretation, the claimed pressable explosive
composition is characterized in product-by-process claim 1 as comprising at
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least explosive crystals, “aluminum powder passivated by being coated with
a layer of isostearic acid,” and a binder, made by any manner of “water-
slurry process.” See, e.g., In re Thorpe, 777 F.2d 695, 697 (Fed. Cir. 1985),
and cases cited therein (“even though product-by-process claims are limited
by and defined by the process, determination of patentability is based on the
product itself”). Claim 2 depends on claim 1, and claim 6 depends on claim
2.
II.
There is no dispute that Kehren would have disclosed to one of
ordinary skill in the art pressable explosive compositions that comprise,
among other things, crystalline explosives, such as RDX and HMK,
passivated aluminum powder, and a binder, and are prepared by a process
which includes the “conventional” steps of coating the crystalline explosive
and other composition components with a thermosetting polysiloxane
prepolymer binder in water after heating the dispersion to 75ºC and then
distilling off the solvent for the binder at that temperature, wherein “[t]he
solids were dispersed by agitation with a 4 paddle stirrer rotating at 500
rpm.” Kehren col. 2, ll. 10-20 and 50-64, col. 5, l. 58 to col. 6, l. 8, and
Examples 1 and 4; see also, e.g., abstract, col. 2, ll. 31-38, and col. 5,
ll. 20-30.
We find that Kondis would have disclosed to one of ordinary skill in
the art isostearic acid coated aluminum particles, which have a hydrophobic
surface and are substantially non-dusting, for use in aqueous slurry
explosives. Kondis, e.g., abstract, col. 1, ll. 7-12, col. 1, l. 39 to col. 3, l. 9,
and Example 1. Kondis discloses that isostearic acid coated aluminum is
prepared by blending atomized aluminum powder with isostearic acid in a
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tumbler at room temperature. Kondis, e.g., Example 1. Kondis discloses
that the aluminum particles can be coated with, “generally speaking,” 0.1 to
5 percent isostearic acid based on the weight of the aluminum particles, and
exemplifies coatings from 0.125 % to 3.0 % isostearic acid. Kondis col. 2,
ll. 1-21, and Examples 1, 3, 4, and 7.
We find that Kondis discloses that “[a]n important characteristic of
coated aluminum powder which is used in the explosive industries is the
ability of the powders to withstand exposure to water or moisutre [sic,
moisture] without excess reaction between the aluminum and aqueous
phases,” which “reaction” produces hydrogen and depletes aluminum.
Kondis col. 3, ll. 57-63. Kondis teaches that a test to determine the
stabilizing effect of a coating heats a mixture of coated aluminum in aqueous
ammonium nitrate to 200ºF, that is, 93.3º C, for six hours and measuring
evolved hydrogen. In such tests, isostearic acid coated aluminum emitted
0.01 ml of hydrogen compared to 2.6 ml for stearic acid coated aluminum
and 9 ml for uncoated aluminum. Kondis col. 4, ll. 9-47. Kondis discloses
that isostearic acid coated aluminum achieves substantially complete
stabilization of the water-aluminum reaction with less coating than is the
case with stearic acid coated aluminum. Kondis col. 4, l. 57 to col. 4, l. 4.
We find that it is disclosed in the Specification that the explosive
composition is prepared “by what is known by one skilled in the art as a
standard water slurry process,” wherein
[i]n this process explosive crystals and passivated aluminum
powder is washed in water and heated before a solution of a
binder system is added. After such addition, the mixture is
further heated to 100ºC. such that the solvent is distilled
whereby the binder is precipitated out and coasts the particles of
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explosive and aluminum, and binds these together into
granulated particles. . . . The granulates of the coated product
are isolated by filtering.
Spec. 7:15-23. The Specification discloses that the process is conducted in a
reactor “under stirring.” Spec. Examples 1, 6, and 7. In the Examples,
“passivated aluminum is defined as passivated with 0.3% by weight
isostearic acid.” Spec. 11:1-2.
III. Claim 1
Appellant principally submits that the Examiner erred in combining
Kehren and Kondis and determining therefrom that one of ordinary skill in
the art would have modified Kehren by using the isostearic acid coated
aluminum powder of Kondis as the passivated aluminum particles of
Kehren. Br. 7-9; Ans. 3 and 4-10.
A.
Appellant contends that Kondis discloses isostearic acid coated
aluminum for aqueous slurry explosives, wherein the isostearic acid is in the
liquid phrase at “appr. 100 degrees C,” while the claimed invention is a dry
explosive made with the water slurry process. Br. 7. Appellant contends
that “[i]t is well known in the art that the water slurry process utilizes
constituents with high viscosity exposed to strong mixing and agitation”
with “high shear forces that one skilled in the art would logically assume
could remove the passivating coating.” Br. 7. Appellant contends that
Kondis does not suggest that isostearic acid coated aluminum would
function as a coating under such shear forces, and thus does not provide the
predictability necessary for a prima facie case of obviousness. Br. 7.
Appellant contends that evidence of nonobviousness is provided by
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Jones1 which, according to Appellant, is “the closest prior art” in “disclosing
an aluminum-containing pressable explosive in a process that resembles the
water slurry process” but “uses perfluorinated solvent PF-5080 (essentially
completely fluoronated [sic, fluorinated] octane compositions, sold by 3M)
instead of water.” Br. 7-8. Appellant contends that Jones discloses that the
perfluorinated solvent “was necessary because of fear for reaction of
aluminum with water.” Br. 8, citing Jones 2. Appellant thus argues that
Jones “teaches away from using passivated aluminum in a water slurry
process in general,” showing “that one skilled in the art would not be
motivated to select isostearic acid passivation . . . as claimed.” Br. 8.
Appellant contends that evidence teaching away from the claimed
invention is provided by the Nevstad Declaration.2 According to Appellant,
Declarant Nevstad attests “that in his opinion, one skilled in the art would
expect the isostearic acid coating of aluminum particles to be eroded during
the violent physical mixing utilized in the water slurry process.” Appellant
contends that Declarant Nevstad’s “opinion is consistent with the belief”
evinced by Jones “that the water slurry process is unsuitable for aluminum-
containing compositions, and further demonstrates the scepticism [sic,
skepticism] of experts in the art.” Br. 8. Appellant contends that the
Examiner was unpersuaded by the Nevstad Declaration because of chemical
bonding between isostearic acid and aluminum particles, and has not
provided evidentiary support for the position. Br. 8-9

1 Steven L. Jones et al. (Jones), “Optimization, Scale-up, and
Characterization of PBXIH-18,” 2003 Insensitive Munitions & Energetic
Materials Technology Symposium, Orlando, Florida, 10-13 (March 2003).
2 Declaration of Gunnar Nevstad, executed December 14, 2007, and
submitted December 18, 2007.
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Appellant contends that evidence that supports the skepticism of Jones
and Declarant Nevstad is provided in the Unneberg Declaration.3 Br. 9.
According to Appellant, Declarant Unneberg attests that “interaction
between aluminium and isostearic acid is not a chemisorption as suggested
by the examiner, but rather a dipole-dipole interaction,” which “conclusion
is supported by the fact that aluminium isostearate is referred to as a salt in
the literature.”4 Br. 9. Appellant contends that Declarant Unneberg attests
that in his opinion, “one skilled in the art of dry pressable explosives made
by the water slurry process would find the results of the present invention
surprising.” Br. 9.
B.
We find that Jones would have disclosed that “[d]ue to aluminum
manufacturer’s warnings of combining aluminum and water, a replacement
carrier fluid had to be identified to safely process PBXIH-18.” Jones 2.
We find that Declarant Nevstad attests that in the known water slurry
process, “solid particles (explosive and eventually aluminum) are suspended
in water under stirring to form a slurry,” binder material in a suitable solvent
added, and distilling off the solvent to obtain a molded powder form used to
form dry explosive. Nevstad Decl. 1-2. Declarant Nevstad further attests
that in the water slurry processes, “the stirring organ (impeller) is often of
the turbine type running at high rpm,” and “[i]t is well known that the
process generates high shear forces together with frequent collisions

3 Declaration of Erik Unneberg, executed July 2, 2008, and submitted
September 19, 2008.
4 Appellant cites “CAS No. 72277-75-9; Chemical/IUPAC Name: Isostearic
acid, aluminium salt.” Br. 9.
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between the solid particles and the stirrer, the baffles, and the walls of the
vessel.” Nevstad Decl. 2. Declarant Nevstad attests that “it is obvious that
no reaction between water and aluminum passivated with isostearic acid
takes place,” and “[g]iven the high shear forces and the brutal treatment of
the solid particles, including the aluminum particles, I would as a person
skilled in the art have assumed that the shear forces described above would
have eroded the isostearic acid from the aluminum, and I find that the
coating in the present invention is not removed as surprising.” Nevstad
Decl. 2. Declarant Nevstad attests that Kondis would not “have led me to
believe that an isostearic acid coating would withstand the shear forces of
the water slurry process.” Nevstad Decl. 2. Declarant Nevstad further
attests that Kondis “teaches that the isostearic acid and the aluminum is
blended in a tumbler at room temperature which indicates that it is just a
mechanical blending taking place, where the bonding between isostearic
acid and aluminum is governed by week [sic, weak] van der Waals forces,”
and “[a]s a consequence of this I would expect the bonding between
isostearic acid and aluminum to be weaker at 100ºC due to the increased
molecular movements at elevated temperatures.” Nevstad Decl. 3.
We find that Declarant Unneberg attests that isostearic acid is a weak
acid that will only slightly dissociate in water which “will prevent formation
of the anion and thus inhibit the establishment of a chemical bond with an
aluminum atom.” Unneberg Decl. 2. Declarant Unneberg attests that “the
interaction between aluminum and isostearic acid is not a chemisorption, but
rather a dipol-dipol interaction;” that persons skilled in the art with
explosives made by the water slurry process “would assume that the violent
mixing utilized in the process would break the dipol-dipol bond and remove
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the passivating coating from the aluminum particles;” and that it “was
surprising” that this was not the case in the present invention. Unneberg
Decl. 2.
C,
On this record, we cannot subscribe to Appellant’s position. We find
no evidence in the record establishing that the so-called “water slurry
process” can only be conducted with high shear forces that effect violent
physical mixing of the composition components. Indeed, Declarant Nevstad
attests that “the stirring organ (impeller) is often of the turbine type running
at high rpm,” and not that such apparatus is required to conduct the water
slurry process. See above p. 7-8. In this respect, we found no requirement
for high shear forces in the Specification, which discloses only that the
composition components are mixed “under stirring.” See above pp. 4-5. We
also find that Kehren would have disclosed a process which reasonably
appears to be a water slurry process, based on the description of such a
process in the Specification and in the Nevstad Declaration. See above pp.
3, 4-5, and 7. We found that in the Kehren process, the composition
components are dispersed in water “with a 4 paddle stirrer rotating at 500
rpm.” See above p. 3.
Thus, on this record, we find that the water slurry process does not
require high shear forces that effect violent physical mixing of the
composition components, and therefore, we maintain our determination that
the claim term “water slurry process” includes any manner of such
processes. See above pp. 2-3. Thus, the claim term encompasses but is not
limited to the water slurry processes utilizing energetic physical mixing
described in the Nevstad and Unneberg Declarations.
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Appellant’s contentions and the evidence in Jones and the Nevstad
and Unneberg Declarations do not convince us that one of ordinary skill in
the art would not have combined Kehren and Kondis, leading to modifying
Kehren by using the isostearic acid coated aluminum particles of Kondis as
the passivated aluminum particles in Kehren’s process. We disagree that
Jones would have taught away from using passivated aluminum generally
and isostearic acid coated aluminum in particular, by stating that the long
known reaction between water and aluminum necessitates the use of an
organic solvent. See above pp. 5-6 and 7. To the contrary, Kehren and
Kondis establish that it was known well before Jones that passivated
aluminum and isostearic acid coated aluminum powder in particular can be
used in combination with water in different aqueous applications in the
explosives arts with limited water-aluminum reaction, including in Kehren’s
process which reasonably appears to be a water slurry process. See above
pp. 3 and 4. See Ans. 7.
Furthermore, we are also not persuaded by the opinion testimony in
the Nevstad and Unneberg Declarations that one of ordinary skill in the art
could not have predicted from Kondis that the isostearic acid coated
aluminum particles can withstand the high shear forces that effect violent
physical mixing of the composition components in water slurry processes.
Neither Declarant Nevstad nor Declarant Unneberg quantify the shear forces
exerted in a water slurry process as described by Declarant Nevstad and the
force required to remove isostearic acid coated on atomized aluminum
power in the amounts applied by the process of Kondis when the thus
passivated aluminum powder is combined with at least the explosive
crystals, binder, solvent for the binder, and water in the water slurry process
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as taught in Kehren, specified in appealed claim 1, and disclosed in the
Specification. Indeed, during the process, the binder coats both the
explosive crystals and the passivated aluminum. See above pp. 1-2, 3, and
4-5. On this record, we find that the coating on the passivated aluminum
powder and the presence of the other components of the mixture would have
reasonably been expected by one of ordinary skill in the art to shield the
passivated aluminum powder to some extent from direct contact with “the
stirrer, the baffles, and the walls of the vessel,” and thus from the “high
shear force and brutal treatment of the solid particles” described by
Declarant Nevstad. See above p. 8. We further note that in the coating test
disclosed in Kondis, the isostearic acid coated aluminum powder is heated to
93.3ºC for 6 hours with little emission of hydrogen, which indicates that the
chemical association between isostearic acid and aluminum powder is
maintained at that temperature over time, regardless of the nature of the
chemical association. See above p. 4. Declarant Nevstad does not establish
that bonding between isostearic acid and aluminum is weaker at the slightly
higher temperature of 100ºC. See above p. 8.
On this record, we find that the attestations of Declarants Nevstad and
Unneberg are not persuasive that the use of isostearic acid coated aluminum
powder in a water slurry process to prepare a pressable explosive
composition as claimed in claim 1 was surprising when considered with the
disclosures of Kehren and Kondis because, as the Examiner points out, the
opinion expressed is unsupported by facts, and thus, we, like the Examiner,
accord the testimonial evidence little weight. Ans. 5-6, 7-8 and 9. See, e.g.,
In re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1368 (Fed. Cir. 2004)
(“[T]he Board is entitled to weigh the declarations and conclude that the lack
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of factual corroboration warrants discounting the opinions expressed in the
declarations.” (citations omitted)); Velander v. Garner, 348 F.3d 1359, 1371
(Fed. Cir. 2003) (“In giving more weight to prior publications than to
subsequent conclusory statements by experts, the Board acted well within
[its] discretion.”); In re Etter, 756 F.2d 852, 859-60 (Fed. Cir. 1985) (en
banc) (opinion affidavit asserting that the reference disclosed obsolete
technology was correctly characterized by the board “as merely representing
opinion[] unsupported by facts and thus entitled to little or no weight.”
(citations omitted)).
To the extent that the testimonial evidence in the Nevstad and
Unneberg Declarations is convincing that the use of isostearic acid coated
aluminum powder is an unexpected result in view of the teachings of Kehren
and Kondis, the evidence pertains to water slurry process utilizing high shear
forces, and thus the pressable explosive compositions prepared by such
process is not reasonably commensurate in scope with claim 1 and the
combined teachings of Kehren and Kondis. Indeed, Kehren teaches that
high shear forces are not necessary to conduct a water slurry process and
pressable explosive compositions prepared by a process such as described by
Kehren are encompassed by claim 1. See above pp. 9-10. See, e.g., In re
Kulling, 897 F.2d 1147, 1149-50 (Fed. Cir. 1990) (objective evidence
directed to optional embodiments); In re Clemens, 622 F.2d 1029, 1035-36,
(CCPA 1980)(the temperature limitation was “very broad” and the “narrow
range of data” did not provide a basis “for predicting the relative
performance” of the claimed and prior art resins “at temperatures at which
the latter would be expected to perform well”); In re Tiffin, 448 F.2d 791,
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792, (CCPA 1971) (evidence to “cups” established non-obviousness of
claims to “cups” but not claims to “containers”).

IV. Claims 2 and 6
Contrary to Appellant’s contention, we find that Jones is no more on
point here than it was with respect to claim 1 as we discussed above. Br. 10.
See above p. 10.
We agree with the Examiner that Stec III is analogous art as Appellant
does not support the contention that the reference is not. Br. 10; Ans. 10-11.
Indeed, Declarant Nevstad merely attests that Stec III is “irrelevant.”
Nevstad Decl. 3.
V.
Accordingly, based on our consideration of the totality of the record
before us, we have weighed the evidence of obviousness found in the
combined teachings of Kehren and Kondis alone and as combined with Stec
III with Appellant’s countervailing evidence of and argument for
nonobviousness, including Jones and the Nevstad and Unneberg
Declarations and argument based thereon in the Brief, and conclude, by a
preponderance of the evidence and weight of argument, that the claimed
invention encompassed by appealed claims 1, 2, and 6-9 would have been
obvious as a matter of law under 35 U.S.C. § 103(a).
The Primary Examiner’s decision 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)(1)(iv).
AFFIRMED
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