Ex Parte McWhorter et al

Patent Trial and Appeal Board

Jan 13, 2015

12296051 (P.T.A.B. Jan. 13, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte THOMAS ELLSWORTH MCWHORTER, AARON ROSENBLATT,
MADHU ANAND, and JOHN PETER HOBBS

Appeal 2013-001309
Application 12/296,051
Technology Center 1700
____________

Before PETER F. KRATZ, MARK NAGUMO, and
N. WHITNEY WILSON, Administrative Patent Judges.

WILSON, Administrative Patent Judge.

DECISION ON APPEAL

Appellants1 appeal under 35 U.S.C. § 134 from the October 20, 2011,
decision of the Primary Examiner finally rejecting claims 1, 2, 4–11, 13–21,
and 23–25. We have jurisdiction under 35 U.S.C. § 6(b).
We reverse.

1 The real party in interest is CDG Environmental, LLC (Appeal Br. 2).
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CLAIMED SUBJECT MATTER
Appellants’ invention is directed to a process for decontaminating
surfaces and enclosures with chlorine dioxide (Abstract). The process
comprises releasing chlorine dioxide gas from an aqueous chlorine dioxide
solution. The aqueous chlorine dioxide solution is very pure, containing less
than 10% by weight, relative to the amount of chlorine dioxide, of total
impurities, which include salts, dissolved chlorine, and acids (Spec. 5, ¶ 29,
Spec. 15, ¶ 67). In other words, “the non-aqueous content of the solution is
more than 90% pure chlorine dioxide (Spec. 6, ¶ 30), and “no significant
levels of salts, dissolved chlorine, acids, or other impurities exist in the
solutions” (Spec. 15, ¶ 66). Only pure chlorine dioxide, rather than acid
vapors or chorine gas, is stripped from these solutions. (id.). Claim 1 is
representative of the claims on appeal and is reproduced below from the
Claims Appendix to the Brief (key claim limitation in italics):
1. A process for handling chlorine dioxide comprising
releasing chlorine dioxide gas from an aqueous chlorine
dioxide solution containing less than 10% by weight,
relative to the chlorine dioxide, of total impurities and
mixing the released chlorine dioxide gas with a carrier gas
to produce a gas stream containing chlorine dioxide.

REJECTIONS
(1) Claims 1, 2, 6–11, 13–17, and 23 are rejected under
35 U.S.C. § 103(a) as unpatentable over Rosenblatt ’739 2 in view of
Lee ’6673 as evidenced by Lee ’8614 and Lee ’135.5

2 Rosenblatt et al., U.S. Patent No. 4,681,739, issued July 21, 1987.
3 Lee et al., U.S. Patent Pub. 2004/0022667 A1, published February 5, 2004.
4 Lee, U.S. Patent No. 5,855,861, issued January 5, 1999.
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(2) Claims 4 and 5 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosenblatt ’739 in view of Lee ’667 as evidenced by
Lee ’861 and Lee ’135, and further in view of Rosenblatt Article6.
(3) Claims 18, 20, and 21 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosenblatt ’739 in view of Lee ’667 and Rosenblatt ’5807
as evidenced by Lee ’861 and Lee ’135.
(4) Claim 19 is rejected under 35 U.S.C. § 103(a) as unpatentable over
Rosenblatt ’739 in view of Lee ’667 and Rosenblatt ’580, evidenced by Lee
’861 and Lee ’135, and further in view of Young8.
(5) Claims 24 and 25 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Rosenblatt ’739 in view of Lee ’667 as evidenced by
Lee ’861 and Lee ’135, and further in view of Frinke.9

DISCUSSION
With respect to each rejection, Appellants argue that the Examiner has
failed to make out a prima facie case of obviousness because the Examiner has
not shown that the art teaches [or suggests] the use of an aqueous chlorine
dioxide solution containing less than 10% by weight, relative to the chlorine
dioxide, of total impurities, as a source of chlorine dioxide gas (Appeal Br. 3,

5 Lee et al., U.S. Patent No. 6,051,135, issued April 18, 2000.
6 Rosenblatt et al., “The Reaction of Chlorine Dioxide with Triethylamine in
Aqueous Solution,” 1963.
7 Rosenblatt et al., U.S. Patent No. 5,110,580, issued May 5, 1992.
8 Young, “Humidity Control in the Laboratory Using Salt Solutions – A
Review,” 17 J. APPL. CHEM, VOL. 241–245 (1967).
9 Frinke et al., U.S. Patent Pub. 2007/0098591 A1, published May 3, 2007.
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9–11).10 Because we find Appellants’ arguments on this issue persuasive,
essentially for the reasons set forth in the Appeal Brief and the Reply Brief, we
will limit our discussion to this limitation as addressed by the Examiner in
connection with claim 1.
The Examiner finds that Rosenblatt ’739 discloses each element of claim 1,
except that it does not disclose the use of an aqueous chlorine dioxide solution
containing less than 10% by weight total impurities (Ans. 2-3). The Examiner
finds that Lee ’667, as evidenced by Lee ’861 and Lee ’135 disclose the
production of a chlorine dioxide solution having the claimed purity (Ans. 3–4).
However, we agree with Appellants that the Examiner has not established
that the Lee references, either individually or collectively, show the production
of chlorine dioxide gas from an aqueous solution of chlorine dioxide having the
claimed degree of purity. The Examiner ultimately relies11 on the statement in
Lee ’135 that “[t]he final pure product chlorine solution does not contain any
unreacted chlorite or other form of chlorine” (Ans. 11, citing Lee ’135, col. 21,
ll. 17–19). However, as argued by Appellants, Lee ’135 is silent with respect to
whether the chlorine dioxide solution that is the source of chlorine dioxide gas
contains other impurities that might be present in the water but which are not
the product of the reaction used to form the chlorine dioxide, such as are
commonly found in hard water (Reply Br. 3–4).
The claimed invention requires that the aqueous chlorine dioxide solution
that is the source of the gas stream containing chlorine dioxide have very low

10 Each of the appealed claims includes this limitation, either directly or by
being dependent on a claim that does.
11 The Examiner does not appear to contest the technical arguments made by
Appellants that Lee ’667 and Lee ’861 do not disclose a chlorine dioxide
solution having the required purity (Ans. 10–11).
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levels of impurities, which gives the solution and the gas stream significant
advantages in use for certain applications (Spec. 15, ¶¶ 66–67). Appellants
state that they achieve such advantages through the use of distilled or deionized
water for the aqueous solution that acts as a temporary storage medium for the
chlorine dioxide (Spec. 15, ¶ 65).
The Examiner has not established that any of the cited art teaches or
suggests the use of an aqueous chlorine dioxide solution containing less than
10% by weight, relative to the chlorine dioxide, of total impurities, as a source
for a gas stream containing chlorine dioxide gas . Accordingly, we determine
that the Examiner has not made out a prima facie case of obviousness, requiring
reversal of each of the rejections.

CONCLUSION
We REVERSE the rejection of claims 1, 2, 6–11, 13–17, and 23 under
35 U.S.C. § 103(a) as unpatentable over Rosenblatt ‘739 in view of
Lee ’667, as evidenced by Lee ’861 and Lee ’135.
We REVERSE the rejection of claims 4 and 5 under
35 U.S.C. § 103(a) as unpatentable over Rosenblatt ’739 in view of Lee ’667
as evidenced by Lee ’861 and Lee ’135, and further in view of Rosenblatt
Article.
We REVERSE the rejection of claims 18, 20, and 21 under
35 U.S.C. § 103(a) as unpatentable over Rosenblatt ’739 in view of Lee ʼ667
and Rosenblatt ’580 as evidenced by Lee ’861 and Lee ’135.
We REVERSE the rejection of claim 19 under 35 U.S.C. § 103(a) as
unpatentable over Rosenblatt ’739 in view of Lee ’667 and Rosenblatt ’580,
evidenced by Lee ’861 and Lee ’135, and further in view of Young.
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We REVERSE the rejection of claims 24 and 25 are rejected under
35 U.S.C. § 103(a) as unpatentable over Rosenblatt ’739 in view of Lee ’667
as evidenced by Lee ’861 and Lee ’135, and further in view of Frinke.

REVERSED

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