Ex Parte LumleyDownload PDFPatent Trial and Appeal BoardOct 30, 201713552238 (P.T.A.B. Oct. 30, 2017) Copy Citation 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. 13/552,238 07/18/2012 Andrew T.tJMTEY E1330.USC1W+ 4819 114581 7590 EIP US LLP 2468 Historic Decatur Road Suite 200 San Diego, CA 92106 EXAMINER KLEIN, GABRIEL J ART UNIT PAPER NUMBER 3641 NOTIFICATION DATE DELIVERY MODE 11/01/2017 ELECTRONIC 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. Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the following e-mail address(es): s andiego @ eip .com PTOL-90A (Rev. 04/07) UNITED STATES PATENT AND TRADEMARK OFFICE BEFORE THE PATENT TRIAL AND APPEAL BOARD Ex parte ANDREW LUMLEY Appeal 2016-002768 Application 13/552,238 Technology Center 3600 Before LISA M. GUIJT, ERIC C. JESCHKE, and GORDON D. KINDER, Administrative Patent Judges. JESCHKE, Administrative Patent Judge. DECISION ON APPEAL STATEMENT OF THE CASE Andrew Lumley (“Appellant”)1 seeks review under 35 U.S.C. § 134(a) of the Examiner’s decision, as set forth in the Final Office Action dated January 2, 2015 (“Final Act.”), rejecting claims 1, 2, 4, 6, 7, 9, 11, 14, 19, 22, 23, 25—32, and 34—39. We have jurisdiction under 35 U.S.C. § 6(b). We affirm. 1 Appellant identifies Jet Physics Limited as the real party in interest. Appeal Br. 3. Appeal 2016-002768 Application 13/552,238 BACKGROUND The disclosed subject matter “relates to a material and a shaped charge, particularly but not exclusively a linear shaped charge.” Spec. 1. Claims 1,19, 30, and 34 are independent. Claim 1 is reproduced below: 1. A linear shaped charge comprising: a liner comprising a material comprising at least a first plurality of particles dispersed in a polymer matrix, the particles being substantially spherical, the particles having a diameter of 70 micro-met[er]s or less, wherein 20 to 30 wt% of the particles have a diameter of 10 micro-met[er]s, wherein each of the particles includes at least one metal, and wherein the particles are packed in the polymer matrix with a density of at least 0.6 of the density of the at least one metal, wherein the material is flexible. REJECTIONS 1. Claims 1, 2, 4, 6, 7, 9, 11, 19, 22, 23, 25—28, and 34 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis (GB 2 165 868 A, published Apr. 23, 1986). 2. Claims 14, 29, and 30 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis and Parkhurst (US 3,185,089, issued May 25, 1965). 3. Claims 31, 32, 35—37, and 39 stand rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis and Clark (US 6,588,344 B2, issued July 8, 2003). 4. Claim 38 stands rejected under 35 U.S.C. § 103(a) as unpatentable over Lewis, Parkhurst, and Clark. 2 Appeal 2016-002768 Application 13/552,238 DISCUSSION Rejection 1 — The rejection of claims 1, 2, 4, 6, 7, 9, 11, 19, 22, 23, 25—28, and 34 under 35 U.S.C. § 103(a) Appellant argues the patentability of the three independent claims in this Rejection—claims 1,19, and 34—as a group and does not provide separate arguments for any dependent claims. Appeal Br. 5—11. We select independent claim 1 as representative, with the remaining claims standing or falling with claim 1. See 37 C.F.R. § 41.37(c)(l)(iv) (2014). A. The Density Limitation Claim 1 recites, among other limitations, that “the particles are packed in the polymer matrix with a density of at least 0.6 of the density of the at least one metal.” Appeal Br. 13 (Claims App.).2 In the Rejection, the Examiner stated that “Lewis discloses a material comprising 97.5% copper powder and 2.5% PEBAX” and that “the density of copper is 8.94 g/cc and the density of PEBAX is 1 g/cc.” Final Act. 2 (discussing Lewis 1,11. 9— 29); see also Lewis 1,11. 9-11 (stating that “the present invention relates to the finding that the thermoplastic copolymer binding system used in the invention serves as a practical binder matrix to envelop extremely high loadings from 90% to 97.5% by weight) of finely divided metal powder and/or flake”), id., 1. 15 (discussing “a polyether amide block copolymer termed PEBAX RTM”). The Examiner stated, “[tjhus, it is clear that the copper particles, which are uniformly distributed throughout the material, are packed in the PEBAX with a density that is greater than 0.6 of the density of copper (i.e. the material is greater than 60% copper by volume[)].” Final Act. 2. 2 We will refer to this as the “density limitation.” 3 Appeal 2016-002768 Application 13/552,238 Before turning to the arguments regarding the density limitation, we discuss four points of agreement. First, both Appellant and the Examiner agree that the density limitation requires that the total mass of the “particles” in a given volume of “material” divided by the given volume of “material” (which includes both “particles” and “polymer”) must be greater than or equal to 0.6 times the density of the metal forming the “particles.”3 See Appeal Br. 6 (paragraph beginning “In response”); Ans. 3 (“In other words, said limitation requires that total mass of the particles divided by the total volume of the claimed ‘material’ is at least 60% of the density of the metal that forms the particles.”). Appellant provides calculations in support of the position that the embodiment at issue from Lewis does not satisfy the density limitation. See Appeal Br. 8 (providing summary of prior calculations). The Examiner, in contrast, provides calculations in support of the position that the embodiment at issue from Lewis does satisfy the density limitation. See Ans. 5—8. As the second point of agreement, both Appellant and the Examiner perform their calculations assuming a lOOg sample of “material,” such that the total mass of the “particles” of copper is 97.5g. See Appeal Br. 8; Ans. 5 (bottom two bullet points) — 6 (top bullet point). Third, both Appellant and the Examiner perform their calculations assuming that the density of the metal forming the “particles” refers to the density of solid copper (8.94 g/cc). See Appeal Br. 8; Ans. 8 (“The limitation in question, as set forth above, requires BDc to be at least 0.6 of the density of copper (8.94 g/cc).”). 3 When referring to any aspect of this construction in the discussion below, we will use bold text to identify language of the construction. 4 Appeal 2016-002768 Application 13/552,238 Fourth, both Appellant and the Examiner perform their calculations using 2.5 cc as the volume of the PEBAX polymer component of the given volume of “material.” See Appeal Br. 8; Ans. 7 (bullet point beginning “Similar”). Appellant and the Examiner disagree, however, as to the volume of the copper in the given volume of “material.” Appellant calculates a volume of 18.75 cc by dividing the hypothetical 97.5 g of copper by a density of 5.2 g/cc. See Appeal Br. 8. The Examiner, in contrast, calculates a volume of 10.9 cc by dividing the same hypothetical 97.5 g of copper by a density of 8.94 g/cc. See Appeal Br. 6 (beginning at “Looking first”) — 7 (ending at “10.9 cc is the total volume occupied by solid copper spheres in the 100 grams of the Lewis material”). In sum, the only difference between the calculations performed by Appellant and the Examiner regarding the density limitation is the density value of copper used. Compare Ans. 5—8, with Appeal Br. 8. The value used by the Examiner (8.94 g/cc) is the density of solid copper. See, e.g., Appeal Br. 7. The value used by Appellant (5.2 g/cc) is, according to Appellant, “the highest end” of the range of the “bulk density for copper powder.” Appeal Br. 8 (stating that the “bulk density of copper powder is between 1.0 g/cc and 5.2 g/cc at most”).4 Id. at 8. With that background, we turn now to the arguments regarding the density limitation, which relate to which of the two density values discussed above is the proper value to calculate the volume of the copper in the given volume of “material.” 4 Appellant does not identity the source of this range of values as the bulk density of copper powder. 5 Appeal 2016-002768 Application 13/552,238 Appellant argues that “the Examiner has failed to establish that Lewis discloses” the density limitation and that “the Examiner’s conclusions regarding the disclosure of Lewis — specifically regarding the packing density of the material disclosed in Lewis — are fundamentally inconsistent with basic principles of physics.” Appeal Br. 6, 7. Appellant states that “Lewis discloses a ‘thermoplastic copolymer binding system’ which ‘envelop[s] . . . 90% to 97 .5 % by weightU of finely divided metal powder and/or flake’” (quoting, with emphasis, Lewis 1,11. 9-11) and argues that “Lewis is completely silent as to the ultimate volume of this mixture, but it is clear that the ‘finely divided metal powder and/or flake’ of Lewis remains in ‘powder and/or flake’ form after mixing — i.e., nothing in Lewis suggests that the ‘finely divided metal powder and/or flake’ coalesces into a solid after mixing.” Appeal Br. 7. Appellant argues that “[a] person of ordinary skill in the art would surely understand that any material in particulate form (including powder and flake) includes spaces or voids between the particles, resulting in a bulk volume that is greater than the volume of an equivalent weight of solid material” and that “in order to calculate the volume occupied by a bulk material such as metal powder, it is necessary to use the bulk density of that material — even when the voids between each particle are occupied by something other than air.” Id. Thus, Appellant argues, the proper density value for copper to calculate the given volume of “material” is the “bulk density of copper powder.” Id. at 8. According to Appellant, “the Examiner has incorrectly used the density of solid copper (8.94 g/cc) to calculate the volume of the powder disclosed in Lewis.” Id. at 7. Appellant argues that the Examiner “has calculated the volume occupied by a given 6 Appeal 2016-002768 Application 13/552,238 weight of solid copper, not the volume occupied by a given weight of copper ‘powder and/or flake,’ as disclosed in Lewis.” Id. at 8. The issue as to the proper density value turns on whether air pockets or voids exist between copper particles in the hypothetical 100 g sample discussed above. The Examiner takes the position that no air or voids exist between copper particles. See Ans. 3^4 (stating that “a person of ordinary skill in the art would at once recognize that [the] ‘plastic/copper mix’ [Lewis 1,1. 26] is a material consisting o/PEBAX and copper (evaporating off all of the solvent would leave only copper and PEBAX behind, without any air or voids)”); see also id. at 9 (“There is no air in between the particles of copper powder in the Lewis material, since PEBAX occupies all of the spaces in between the copper particles in the Lewis material.”). Appellant takes the position that air or voids do exist between copper particles (and thus, a lower density value should be used). See Reply Br. 8 (stating that the Examiner’s “calculations impermissibly ignore the fact that there are still spaces between the copper particles in the mixture disclosed in Lewis” and that “the Examiner is inexplicably discounting the void fraction in his calculation of the volume occupied by the copper particles in Lewis”); id. at 5 (asserting that “the Examiner has provided no support whatsoever for the assertion that evaporating off all of the solvent would leave no air or voids in the remaining mixture” and that “[n]othing in the Appeal Brief, the disclosure of Lewis, or any other evidence of record suggests that evaporation of all the solvent would result in a mixture which is completely free of air voids or bubbles after the solvent has been evaporated”). A prima facie case of inherency requires a basis in fact and/or technical reasoning to reasonably support a determination that the allegedly 7 Appeal 2016-002768 Application 13/552,238 inherent characteristic necessarily flows from the teachings of the applied prior art. Ex parte Whalen, 89 USPQ2d 1078, 1084 (BPAI 2008) (precedential). For the Examiner’s reasons as set forth above, we determine that the Examiner’s explanation supports a prima facie case that essentially no air or voids exist between copper particles in the hypothetical 100 g sample of the relied-upon material disclosed in Lewis. Appellant has not shown error in that finding. Thus, we are not apprised of error in the Rejection based on the Examiner’s use of 8.94 g/cc (i.e., the density of solid copper) rather than Appellant’s 5.2 g/cc to calculate the given volume of “material” in the construction of the density limitation. See Ans. 9 (stating that “Appellant seems to think that the bulk density of copper in the PEBAX matrix must be determined using the bulk density of copper as it would sit by itself, with air in between the individual particles”). Moreover, we are not apprised of error in the finding that, based on the Examiner’s calculations, the relied-upon material disclosed in Lewis satisfies the density limitation. B. The Particle Diameter Limitations Claim 1 recites, among other limitations, (1) “the particles having a diameter of 70 micro-met[er]s or less” and (2) “wherein 20 to 30 wt % of the particles have a diameter of 10 micro-met[er]s.”5 Appeal Br. 13 (Claims App.). In the Rejection, the Examiner stated that Lewis does not explicitly disclose these limitations. Final Act. 2—3. The Examiner did, however, note “that Lewis clearly discloses that the high-loading of copper particles within the PEBAX matrix (e.g., 97.5% copper particles) may be achieved using 5 We will refer to these limitations collectively as the “particle diameter limitations.” 8 Appeal 2016-002768 Application 13/552,238 only copper powder (i.e., without any copper flake; [Lewis] lines 9-15)” and stated that “Lewis discloses that a suitable blend of particle sizes must be selected in order to achieve such a high-loading of copper particles within the PEBAX matrix (lines 9—20).” Id. at 3. The Examiner also stated that “a person of ordinary skill in the art would be well aware of the Kepler Conjecture, which states that highest packing density that may be achieved by packing equally sized spheres in a three-dimensional volume of space is about 74%” and that, therefore, “a person of ordinary skill in the art would at once recognize that a blend of differently sized particles of spherical atomized copper powder would be necessary in order to achieve the high- loadings of copper powder disclosed by Lewis (i.e., unequal sphere packing would inherently be required).” Id. at 4. According to the Examiner, “the mathematics (associated with unequal sphere packing) required to determine the blend of diameters of spherical copper powder, necessary to achieve said high-loadings of copper powder, is within the knowledge-base of those having ordinary skill in the art.” Id. The Examiner found that “Lewis supports and implies this assertion, by stating that a suitable blend of particle sizes must be used to achieve the high-loading of copper powder disclosed (thus, requiring a person of ordinary skill in the art to determine said blend of particle sizes).” Id. According to the Examiner, it would have been obvious to a person of ordinary skill in the art to utilize copper powder particles having a diameter of 70 micro meters or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and/or since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Further, it would have been obvious to a person of ordinary skill in the art to utilize 20 to 30 wt % of copper powder 9 Appeal 2016-002768 Application 13/552,238 particles having a diameter of 10 micro-meters or less, since it has been held that where the general conditions of a claim are disclosed in the prior art, discovering the optimum or workable ranges involves only routine skill in the art, and/or since it has been held that discovering an optimum value of a result effective variable involves only routine skill in the art. Id. at 4—5. First, Appellant argues that “the Examiner has failed to establish that Lewis discloses” the particle diameter limitations. Appeal Br. 9; see id. at 10 (“Lewis simply does not disclose or suggest a material in which ‘20 to 30 wt % of the particles have a diameter of 10 micro-metres,’ . . . much less one in which the particles have ‘a diameter of 70 micro-metres or less’ . . . .”). This argument does not address the rejection as articulated; the Examiner acknowledges that Lewis does not explicitly teach the particle diameter limitations. See Final Act. 2—3. Second, Appellant argues that “Lewis says nothing about the ultimate volume or packing density of its mixture” and that “[a]ll that Lewis discloses in this regard is that copper flake (particle size 200 — 20 g) can be combined with copper powder (particle size 200 — 20 p) to achieve a ‘very high loading.’” Appeal Br. 10 (citing Lewis 1,11. 19—25). Appellant argues that “Lewis mentions nothing whatsoever about particles smaller than 20 p” and that “[t]he Examiner’s conclusions regarding the ‘packing density that would be required’ in Lewis are simply unsupported by fact or logic.” Id. (quoting Final Act. 13 (“Further, the limit that the Kepler Conjecture places on said packing density is substantially lower than the packing density that would be required to pack spherical atomized copper particles in a PEBAX matrix such that resultant material is 97.5% by weight copper particles as disclosed by Lewis.”)). Thus, according to Appellant, “the Examiner’s conclusions 10 Appeal 2016-002768 Application 13/552,238 which flow from this incorrect understanding of Lewis (e.g., that one of skill in the art ‘would be capable of performing the necessary math to determine a suitable blend of particle sizes’ and ‘would at once recognize the need to do so upon reading the disclosure of Lewis’) are also unsupported by fact or logic.” Appeal Br. 10. This argument does not apprise us of error because the Examiner does not rely on Lewis as disclosing either the “ultimate volume or packing density of its mixture” (Appeal Br. 10) or as disclosing “wherein 20 to 30 wt % of the particles have a diameter of 10 micro-met[er]s,” as required by one of the particle diameter limitations. See Final Act. 2—3 (stating that “Lewis discloses the claimed invention, except for wherein ... (3) 20 to 30 wt % of the particles have a diameter of 10 micro-meters of less”). Further, Appellant has not persuasively shown that the Examiner relied on an “incorrect understanding of Fewis.” Appeal Br. 10. Moreover, even assuming that the Examiner did rely on an “incorrect understanding of Fewis” as to the aspects raised, Appellant has not shown how such an incorrect understanding undermines or shows error in the statements by the Examiner quoted in part by Appellant: (1) “Further, the limit that the Kepler Conjecture places on said packing density is substantially lower than the packing density that would be required to pack spherical atomized copper particles in a PEBAX matrix such that resultant material is 97.5% by weight copper particles as disclosed by Fewis.” (Final Act. 13 (emphasis added)); (2) “Further, the examiner asserts that those of ordinary skill in the art would be capable of performing the necessary math to determine a suitable blend of particle sizes (e.g., a mathematical analysis for unequal sphere packing).” (Final Act. 14 (emphasis added)); and (3) “A 11 Appeal 2016-002768 Application 13/552,238 person of ordinary skill in the art would likewise be capable of performing the necessary math to determine a suitable blend of particle sizes and proportions of sizes or ranges of sizes, and would at once recognize the need to do so upon reading the disclosure of Lewis.''’ (Final Act. 14—15 (emphasis added)). The identified statements relate more to the knowledge and understanding of one of ordinary skill in the art than to the aspects of Lewis raised by Appellant. Third, Appellant argues that “the Examiner has not identified or described the ‘necessary math’ to determine a ‘suitable blend of particle sizes.’” Appeal Br. 10 (quoting Final Act. 14 (“Further, the examiner asserts that those of ordinary skill in the art would be capable of performing the necessary math to determine a suitable blend of particle sizes (e.g., a mathematical analysis for unequal sphere packing).”)). Appellant argues that “[e]ven if there were a motivation in the art to combine specific proportions of specifically sized particles to achieve a specific packing density, there are billions of possible combinations to choose from.” Appeal Br. 10. According to Appellant, “[wjithout any reasonable explanation of how one of skill in the art would arrive at the claimed combination of particle sizes to achieve the claimed packing density, the Examiner has failed to establish prima facie obviousness of the claimed combination.” Id. We are not apprised of error based on this argument. To proceed from the understood need for unequal sized spheres to form the relied-upon material in Lewis (see Final Act. 3 4) to the specific requirements in the particle diameter limitations, the Examiner states that it would have been obvious to arrive at the claimed values while discovering the optimum or workable ranges of result-effective variables. See Final Act. 4—5; see also In 12 Appeal 2016-002768 Application 13/552,238 re Aller, 220 F.2d 454, 456 (CCPA 1955) (“[WJhere the general conditions of a claim are disclosed in the prior art, it is not inventive to discover the optimum or workable ranges by routine experimentation.”). Specifically, the Examiner finds that “the diameters of the spherical particles and the weight percentages of spherical particles having specific diameters constitute result effective variables, with the result being the packing density of said spherical particles in the material” and that “[cjhoosing certain spherical particle diameters, and certain weight percentages of spherical particles having specific diameters, would directly determine the possible packing density of the spherical particles within the material.” Ans. 11; see Final Act. 4 (stating that “Lewis supports and implies this assertion, by stating that a suitable blend of particle sizes must be used to achieve the high-loading of copper powder disclosed (thus, requiring a person of ordinary skill in the art to determine said blend of particle sizes)”); Lewis 1,11. 18—20 (“The metal flake is added in order to take up voids in the atomised powder to achieve as high a bulk loading as possible. From this it would be possible to obtain a very high loading using a suitable blend of particle sizes in order to reach the highest practical density of loading.”); see also In re Applied Materials, Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (“A recognition in the prior art that a property is affected by the variable is sufficient to find the variable result-effective.”). Appellant does not address and has not shown error in these findings regarding result-effective variables. Appeal Br. 9-11; Reply Br. 10-11. Appellant has also not demonstrated error in the Examiner’s determination that discovering workable ranges of the identified result- effective variables would be within the level of ordinary skill in the art. See 13 Appeal 2016-002768 Application 13/552,238 Final Act. 4; Ans. 11 (stating that “the mathematics associated with unequal sphere packing, i.e., geometry, which are required to determine a blend of diameters of spherical particles necessary to achieve the packing density of the Lewis material (about 81 %), are within the knowledge-base of those having ordinary skill in the art”). We turn now to the potential criticality of the specific values in the particle diameter limitations. The Examiner states that “the claimed particle diameters, and ranges of weight percentages of particles having specific diameters, are not disclosed as being critical to the claimed invention.” Ans. 10. Appellant does not assert criticality of the claimed values, but rather replies that “‘criticality’ of a claimed feature is not a criterion for evaluating obviousness.” Reply Br. 10.6 Thus, Appellant has not shown criticality of the specific values in the particle diameter limitations. For the reasons above, we sustain the rejection of independent claim 1. Claims 2, 4, 6,1,9, 11, 19, 22, 23, 25—28, and 34 fall with claim 1. Rejection 2 — Claims 14, 29, and 30 A. Claims 14 and 30 For independent claim 30 (and for claim 14, which depends from claim 30), Appellant relies on the same arguments discussed above with 6 In the context of a rejection based on discovering the optimum or workable ranges of a result-effective variable, the criticality of a claimed range can be relevant to patentability. See, e.g., Applied Materials, 692 F.3d at 1297 (“The outcome of optimizing a result-effective variable may still be patentable if the claimed ranges are critical and produce a new and unexpected result which is different in kind and not merely in degree from the results of the prior art.” (internal quotation marks omitted)). 14 Appeal 2016-002768 Application 13/552,238 regard to claim 1. Compare Appeal Br. 11—12, with id. at 5—11. Thus, for the reasons discussed above, we sustain the rejection of claims 14, and 30. B. Claim 29 Appellant does not separately argue claim 29, which depends from claim 19. See Appeal Br. 5—11. Thus, for the reasons discussed above, we sustain the rejection of claim 29. Rejection 3 — Claims 31, 32, 35—37, and 39 Appellant does not separately argue (1) claims 31, 32, 35, and 36, which depend from claim 1, (2) claim 37, which depends from claim 19, or (3) claim 39, which depends from claim 34. See Appeal Br. 5—11. Thus, for the reasons discussed above, we sustain the rejection of claims 31, 32, 35— 37, and 39. Rejection 4—Claim 38 Appellant does not separately argue claim 38 (Appeal Br. 11—12), which depends from claim 30. Thus, for the reasons discussed above, we sustain the rejection of claim 38. DECISION We affirm the decision to reject claims 1, 2, 4, 6, 7, 9, 11, 14, 19, 22, 23, 25-32, and 3A-39 under 35 U.S.C. § 103(a). 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). See 37 C.F.R. § 1.136(a)(l)(iv). AFFIRMED 15 Copy with citationCopy as parenthetical citation