Allison SAMPSON et al.

Patent Trials and Appeals Board

Jun 23, 2020

2020002810 (P.T.A.B. Jun. 23, 2020)

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.
14/178,643 02/12/2014 Allison H. SAMPSON P66732US4 4262
136 7590 06/23/2020
JACOBSON HOLMAN PLLC
400 Seventh Street N.W. Suite 700
Washington, DC 20004-2218
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
06/23/2020 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):
patent@jhip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ALLISON H. SAMPSON and RICHARD L. SAMPSON
Appeal 2020-002810
Application 14/178,643
Technology Center 1700
Before BEVERLY A. FRANKLIN, JAMES C. HOUSEL, and
MONTÉ T. SQUIRE, Administrative Patent Judges.
HOUSEL, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 57–61, 63, 65, and 68. We have
jurisdiction under 35 U.S.C. § 6(b). An oral hearing was held on June 11,
2020.2

1 We use the word Appellant to refer to “applicant” as defined in 37 C.F.R.
§ 1.42(a). Appellant identifies the real party in interest as the Inventors,
Allison Sampson and Richard Sampson. Appeal Brief (“Appeal Br.”) filed
November 4, 2019, 4.
2 A written transcript of the oral hearing has been entered into the record.

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We REVERSE.3
CLAIMED SUBJECT MATTER
The invention relates to a method for generating chlorine dioxide by
catalysis of chlorous acid. Spec. 1:8–9. Appellant discloses that chlorous
acid can be generated in a controlled manner from an aqueous chlorite or
chlorate salt solution by ion exchange or conventional acidification, and that
chlorine dioxide can be generated from chlorous acid by use of at least one
catalytic material. Id. at 5:14–17. Appellant further discloses that the
chlorous acid may be generated continuously in a first step and subsequently
catalyzed to form chlorine dioxide continuously in a second step, and that
this process must be carried out in an aqueous environment. Id. at 6:1–8.
Claim 65, reproduced below from the Claims Appendix to the Appeal
Brief, is illustrative of the claimed subject matter:
65. A process for producing chlorine dioxide comprising the
steps of:
– obtaining a container having an inlet and an outlet and
packed full with a catalytic material selected from the group
consisting of platinum, palladium, manganese dioxide, carbon,
ion exchange material, and combinations thereof,
– continuously feeding a stream of chlorous acid through
the container inlet into contact with the catalytic material in a
moist environment to produce a chlorine dioxide solution and,
simultaneously,
– continuously removing a stream of the thus produced
chlorine dioxide solution from contact with the catalytic material
through the container outlet.

3 This Decision also cites to the Specification (“Spec.”) filed February 12,
2014, the Examiner’s Answer (“Ans.”) dated December 31, 2019, and the
Reply Brief (“Reply Br.”) filed March 2, 2020.
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REFERENCES
The Examiner relies on the following prior art:
Name Reference Date
Barber US 3,936,502 Feb. 03, 1976
Ringo US 5,008,096 Apr. 16, 1991
Kross et al. (“Kross”) US 5,100,652 Mar. 31, 1992
Schroeder et al.
(“Schroeder”)
US 5,324,477 June 28, 2994
Appellant’s Admitted
Prior Art (“AAPA”)
Spec. 12:1–9 Feb. 12, 2014

REJECTIONS
The Examiner maintains, and Appellant requests our review of, the
following rejections under 35 U.S.C. § 103(a):
1. Claims 57–61, 63, 65, and 68 as unpatentable over Kross in
view of AAPA and Schroeder, and optionally further in
view of Barber; and
2. Claims 57, 65, and 68 as unpatentable over Ringo in view of
Kross, and optionally further in view of Schroeder and
Barber.
OPINION
We review the appealed rejections for error based upon the issues
Appellant identifies, and in light of the arguments and evidence produced
thereon. Ex parte Frye, 94 USPQ2d 1072, 1075 (BPAI 2010) (precedential)
(cited with approval in In re Jung, 637 F.3d 1356, 1365 (Fed. Cir. 2011)
(“[I]t has long been the Board’s practice to require an applicant to identify
the alleged error in the examiner’s rejections.”). After considering the
argued claims and each of Appellant’s arguments, we are persuaded of
reversible error in the appealed rejections. Accordingly, we reverse the
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rejections for the reasons set forth in the Appeal and Reply Briefs. We add
the following primarily for emphasis.
We limit our discussion to independent claim 65 which is dispositive
of the issues on appeal. A complete statement of the Examiner’s obviousness
rejections can be found in the Examiner’s Answer. Ans. 3–11.
Appellant argues, inter alia, that neither the Examiner’s combination
of Kross, Schroeder, AAPA, and Barber, nor the Examiner’s combination of
Ringo, Kross, Schroeder, and Barber teaches or suggests continuously
feeding a stream of chlorous acid through the inlet of a container packed full
with a catalytic material selected from the group consisting of platinum,
palladium, manganese dioxide, carbon, ion exchange material, and
combinations thereof to produce a chlorine dioxide solution. Appeal
Br. 18–26, 46–49, 54–62; Reply Br. 6–7, 9–10. We agree. In each
combination, the Examiner relies on Kross for teaching that the acidification
of chlorite to produce chlorine dioxide produces chlorous acid as an
intermediate compound. Ans. 3–5. The Examiner finds that Kross teaches or
suggests that chlorous acid can be converted to chlorine dioxide in the
presence of a catalyst.4 Id. However, the Examiner fails to direct us to any

4 Appellant argues that the Examiner has mischaracterized Specification
page 12, lines 1–9, as admitted prior art. Appeal Br. 31–37. We agree.
Admissions of prior art, similar to disclaimers, by patent applicants must be
clear and unmistakable. See In re Fout, 675 F.2d 297, 301 (CCPA 1982); cf.
Omega Engineering, Inc. v. Raytek Corp., 334 F.3d 1314, 1326 (Fed. Cir.
2003) (“the alleged disavowing actions or statements made during
prosecution [must] be both clear and unmistakable”). Here, we find that the
only clear and unmistakable admission of prior art is that the identified
catalysts are commercially available and that they could be deposited on
various substrates to increase their surface area. Spec. 12:1–9. The Examiner
erred in finding that this admission extended to identifying these listed
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prior art teaching or suggestion to separately produce chlorous acid apart
from the catalyst, nor do we find any. Kross’ teaching merely indicates that
when chlorite, acid, and catalyst are mixed together, metastable chlorous
acid is generated as an intermediate that decomposes to form chlorine
dioxide. Kross 3:10–17, 45–14. Likewise, Ringo teaches mixing chlorite,
acid, and catalyst together to obtain chlorine dioxide, but fails to mention a
chlorous acid intermediate. Ringo 2:25–59.
The Examiner determines that claim 65 does not exclude a single step
in which chlorous acid is formed simultaneously with the catalyst contact
because Appellant discloses that the catalyst contact may occur either
subsequent to or simultaneously with the formation of chlorous acid.
Ans. 25. However, claim 65 is clearly drafted to cover only contacting
chlorous acid with the catalyst subsequent to the formation of this chlorous
acid. As such, the Examiner erroneously interprets claim 65 to encompass a
single step of simultaneously mixing chlorite, acid, and catalyst together.
Alternatively, the Examiner relies on Barber to suggest the conversion
of Kross’ or Ringo’s processes from batch to continuous, and then further
concludes that it would have been obvious to produce the chlorous acid
before catalyst contact because the selection of any order of mixing
ingredients and performing process steps is prima facie obvious. Ans. 9, 25
(citing In re Burhans, 154 F.2d 690 (CCPA 1946); In re Gibson, 39 F.2d
975 (CCPA 1930). Moreover, the Examiner finds that there are six possible
orders in which the three reactants can be added to the reactor which “is a
sufficient[ly] small number[]” such that it would have been obvious to have

catalysts as known in the prior art to catalyze the reaction of chlorous acid to
generate chlorine dioxide.
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selected the best order among these six possible combinations, absent
unexpected results, especially given that Barber suggests that the catalyst be
placed in the container for a continuous process. Ans. 28.
The Examiner’s position appears to be directed both to the principle
that selecting a known option from a finite number of identified, predictable
solutions would have been prima facie obvious and that one such
combination inherently results in chlorous acid being produced prior to
being fed to the catalyst container. See In re Kubin, 561 F.3d 1351, 1359
(Fed. Cir. 2009) (“[W]here a skilled artisan merely pursues ‘known options’
from a ‘finite number of identified, predictable solutions,’ obviousness under
§ 103 arises.” (quoting KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 421
(2007)). However, the Examiner does not identify the six possible
combinations nor direct us to any evidence that each of these six
combinations were predictable solutions. Indeed, given the Examiner’s
position regarding Barber’s teaching that the catalyst be placed in the
container as a fixed bed reactor, the other two reactants (chlorite and acid)
may either be added together or separately to this reactor. Yet, even if there
are just two possible ways to add chlorite and acid to the catalyst containing
reactor, as Appellant argues, neither includes continuously feeding a stream
of chlorous acid to the reactor. There is insufficient evidence to reasonably
expect, from Kross’ teaching, that mixing chlorite and acid into a single feed
stream prior to being fed to the reactor will produce a stream of chlorous
acid as required by claim 65. In general, a limitation is inherent “if it is the
‘natural result flowing from’ the explicit disclosure of the prior art.”
Schering Corp. v. Geneva Pharms., 339 F.3d 1373, 1379 (Fed. Cir. 2003)
(quoting Eli Lilly & Co. v. Barr Labs., Inc., 251 F.3d 955, 970 (Fed. Cir.
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2001)). “Inherency . . . may not be established by probabilities or
possibilities. The mere fact that a certain thing may result from a given set
of circumstances is not sufficient.” MEHL/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1365 (Fed. Cir. 1999) (quoting In re Oelrich, 666 F.2d 578,
581 (CCPA 1981)). In this regard, although the Examiner finds Kross
teaches that chlorous acid is produced by the acidification of chlorite, the
Examiner has not established that chlorous acid necessarily would be
produced if both chlorite and acid are added just prior to feeding to the
reactor. Kross teaches that chlorous acid is generated in a batch process
comprising mixing chlorite, acid, and catalyst, but does not provide any
information on reaction or residence times. As such, the Examiner has
neither identified a finite number of predictable solutions nor that the step of
continuously feeding a stream of chlorous acid to a catalyst-containing
container would necessarily result from one of these solutions.
Appellant, therefore, has identified reversible error in the appealed
rejections. Accordingly, we do not sustain the Examiner’s obviousness
rejections based on the combination of Kross, AAPA, Schroeder, and Barber
or the combination of Ringo, Kross, Schroeder, and Barber.
CONCLUSION
Upon consideration of the record and for the reasons set forth above
and in the Appeal and Reply Briefs, the Examiner’s decision to reject, under
35 U.S.C. § 103(a), claims 57–61, 63, 65, and 68 as unpatentable over Kross
in view of AAPA and Schroeder, and optionally further in view of Barber,
and claims 57, 65, and 68 as unpatentable over Ringo in view of Kross, and
optionally further in view of Schroeder and Barber, is reversed.
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DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
Reference(s)/Basis Affirmed Reversed
57–61, 63,
65, 68
103(a) Kross, AAPA,
Schroeder, Barber
57–61, 63,
65, 68
57, 65, 68 103(a) Ringo, Kross,
Schroder, Barber
57, 65, 68
Overall
Outcome
57–61, 63,
65, 68

REVERSED