Ex Parte DiMascio

Board of Patent Appeals and Interferences

Apr 22, 2009

10986610 (B.P.A.I. Apr. 22, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte FELICE DIMASCIO
____________

Appeal 2009-0994
Application 10/986,610
Technology Center 1700
____________

Decided:1 April 22, 2009
____________

Before BRADLEY R. GARRIS, LINDA M. GAUDETTE, and
JEFFREY B. ROBERTSON, Administrative Patent Judges.

ROBERTSON, Administrative Patent Judge.

DECISION ON APPEAL

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, begins to run from the Decided Date
shown on this page of the decision. The time period does not run from the
Mail Date (paper delivery) or Notification Date (electronic delivery).

Appeal 2009-0994
Application 10/986,610

STATEMENT OF THE CASE
Appellant appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1, 3, and 12-16.2 (App. Br. 2). We have jurisdiction
pursuant to 35 U.S.C. § 6(b).
We AFFIRM.
THE INVENTION
Appellant describes a process for generating chlorous acid by
contacting a chlorite solution with an ion exchange material. (Spec. ¶
[0006].3 Claim 1, reproduced below, is representative of the subject matter
on appeal.
1. A process for generating chlorous acid, comprising:
contacting a chlorite salt solution with an ion exchange
material consisting essentially of a cation exchange material in
the hydrogen form in a moist environment and outside an
electric field for a time sufficient to effect an essentially
complete substitution of cations in the chlorite salt solution with
hydrogen ions on the cation exchange material to form chlorous
acid.

THE REJECTIONS
The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sampson US 7,087,208 B2 Aug. 8, 2006 (Aug. 2, 2001).

2 Claims 2 and 4-11 have been canceled. (Amended Appeal Brief filed
January 8, 2008, hereinafter “App. Br.,” 2).
3 Appellant’s Application entitled “System and Process for Producing
Halogen Oxides” was filed on November 12, 2004, and is a divisional
application of Parent Application 10/065,259, filed September 30, 2002.
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There are three grounds of rejection for review on appeal: (1) the
Examiner rejected claims 1, 3, and 12-16 under 35 U.S.C. § 112, first
paragraph, as failing to comply with the written description requirement; (2)
the Examiner rejected claims 1, 3, and 12-16 under 35 U.S.C. § 112, second
paragraph, as being indefinite for failing to particularly point out and
distinctly claim the subject matter which applicant regards as the invention;
and (3) the Examiner rejected claims 1, 3, 12, and 14 under 35 U.S.C.
§ 102(e) as being anticipated by Sampson.4
The Examiner determined that claims 1, 3 and 12-16 fail to comply
with the written description requirement because there is insufficient support
in the Specification for the limitations “outside an electric field” and “to
effect an essentially complete substitution of cations in the chlorite salt
solution with hydrogen ions on the cation exchange material to form
chlorous acid” recited in claim 1. (Examiner’s Answer entered February 6,
2008, hereinafter “Ans.,” 4). The Examiner also determined that claims 1, 3,
and 12-16 are indefinite because the term “essentially complete” is a relative
term and the Specification fails to provide a standard for ascertaining the
requisite degree associated with “essentially.” (Ans. 5).
The Examiner found that Sampson, in claim 1, discloses the process
recited in appealed claim 1. (Ans. 5-6). The Examiner found that although
Sampson does not disclose the use of an electric field, because Sampson
discloses that the chlorous acid produced is pure, Sampson’s process must
have been carried out outside of an electric field. (Ans. 6). Alternatively,

4 The Examiner’s objection to claim 3 under 37 C.F.R. § 1.75(c) as being of
improper dependent form for failing to further limit the subject matter of a
previous claim is not properly before us on appeal. See MPEP § 706.01
[R-2] 8th Ed. Rev. 3, Aug. 2005; 37 C.F.R. § 1.181 (a)(1) (2004).
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the Examiner found that because there are only two scenarios in which the
process can be carried out, either in an electric field or outside an electric
field, Sampson discloses a process for producing pure chlorous acid outside
an electric field with sufficient specificity. (Ans. 6).
Appellant contends that the recitation “outside an electric field” is
supported by the Specification because, while an electric field is not
discussed in the context of a cation exchange column, an electric field is
described for catalyst regeneration, which implies that the cation exchange
column is used outside the presence of an electric field. (App. Br. 5).
Appellant argues that it is well understood that no electric field is needed to
exchange ions. (App. Br. 6). Appellant also contends that the term
“essentially complete substitution” is supported by the term “substantially
pure” in the Specification and the Declaration evidence of record shows that
“essentially complete substitution” is inherent to the recited process. (App.
Br. 6-8). Appellant argues that “essentially complete” is not indefinite
because the Specification and Declaration evidence of record show that one
of ordinary skill in the art would understand the meaning of “essentially
complete.” (App. Br. 9). Appellant contends that Sampson does not teach
“outside an electric field” as recited in the claims. (App. Br. 10 and 11).

ISSUES
We frame the issues on appeal as:
Has Appellant shown that the Examiner reversibly erred in finding
that “outside an electric field” as recited in claim 1 is not described in the
Specification in such a way as to reasonably convey to one skilled in the art
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that the inventor, at the time the application was filed, had possession of the
claimed invention?
Has Appellant shown that the Examiner reversibly erred in finding
that “essentially complete substitution” as recited in claim 1 is not described
in the Specification in such a way as to reasonably convey to one skilled in
the art that the inventor, at the time the application was filed, had possession
of the claimed invention?
Has Appellant shown that the Examiner reversibly erred in
determining that “essentially complete substitution” as recited in claim 1 is a
term of degree that would not allow one of ordinary skill in the art to
determine the scope of the claims, thus rendering the claim indefinite?
Did the Examiner reversibly err in finding that Sampson’s process
was carried out outside of an electric field?

FINDINGS OF FACT
The record supports the following findings of fact (FF) by a
preponderance of the evidence.
1. Appellant’s Specification is silent as to whether the chlorite salt
solution is contacted with a cation exchange material outside the
presence of an electric field. (See Specification, generally).
2. Appellant’s Specification states: “[d]ue to the natural selectivity of
the cation exchange material 30, contacting the alkali metal
chlorite solution advantageously produces a substantially pure
aqueous chlorous acid solution.” (Para. [0021]).
3. Appellant’s Specification states that a regeneration step is
performed when the cation exchange material reaches or is near
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exhaustion through use of a protic acid that may be produced
electrolytically. (Para. [0022], [0043]).
4. The Declaration under 37 C.F.R. §1.132 of Felice DiMascio filed
July 12, 20065 (“The First DiMascio Declaration”) includes two
experiments where sodium chlorite salt solution is contacted with a
cation exchange material in hydrogen form to produce chlorous
acid, one performed within an applied electric field and one
performed outside an electric field. (The First DiMascio
Declaration, para. 5, Attachment 1).
5. The experiments were conducted at different ClO2 concentrations,
flow rates, temperatures, and pH. (The First DiMascio
Declaration, Attachment 1).
6. Only one experiment was performed in an applied electric field, at
one voltage and current. (The First DiMascio Declaration, para. 5
Attachment 1).
7. The chlorine dioxide yield for the example performed outside an
electric field was 99.5% and the chlorine dioxide yield for the
example performed in the presence of an electric field was 93.5%.
(The First DiMascio Declaration, para. 5).
8. The Declaration of Felice DiMascio filed on February 6, 2007
under 37 C.F.R. §1.132 (“The Second DiMascio Declaration”)6,
states that the production of substantially pure chlorous acid
solution inherently means that an essentially complete substitution
takes place. (The Second DiMascio Declaration, para. 6).

5 App. Br., Evidence B.
6 App. Br., Evidence A.
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9. The Second DiMascio Declaration states that “substantially pure”
is understood by one of ordinary skill in the art to mean “>99%
pure.” (The Second DiMascio Declaration, para. 5).
10. Sampson states that “if the sodium ion is replaced by a hydrogen
ion by means of a cation exchange material, the equilibrium
conditions of the solution change, and total acidification of the
chlorite salt and/or chlorate salt is possible, thereby making a pure
chlorous acid solution.” (Col. 4, ll. 62-67).
11. In the prosecution history of Sampson, Patentee argued that one of
ordinary skill in the art would understand what “essentially pure”
means in the context of the Sampson’s Specification. (The First
DiMascio Declaration, para. 7, Attachment 3, p. 16-17;
Attachment 4, para. 9).

PRINCIPLES OF LAW
In construing claims, the Specification “‘is the single best guide to the
meaning of a disputed claim term.’” Phillips v. AWH Corp., 415 F.3d 1303,
1315 (Fed. Cir. 2005) (en banc) (quoting Vitronics Corp. v. Conceptronic,
Inc., 90 F.3d 1576, 1582 (Fed. Cir. 1996)).
As explained in Regents of the Univ. of Cal. v. Eli Lilly & Co., 119
F.3d 1559, 1566 (Fed. Cir. 1997),
[t]o fulfill the written description requirement, a patent
specification must describe an invention and do so in sufficient
detail that one skilled in the art can clearly conclude that "the
inventor invented the claimed invention." Lockwood v.
American Airlines, Inc., 107 F.3d 1565, 1572, 41 USPQ2d
1961, 1966 (1997); In re Gosteli, 872 F.2d 1008, 1012, 10
USPQ2d 1614, 1618 (Fed. Cir. 1989) ("[T]he description must
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clearly allow persons of ordinary skill in the art to recognize
that [the inventor] invented what is claimed."). Thus, an
applicant complies with the written description requirement "by
describing the invention, with all its claimed limitations, not
that which makes it obvious," and by using "such descriptive
means as words, structures, figures, diagrams, formulas, etc.,
that set forth the claimed invention." Lockwood, 107 F.3d at
1572, 41 USPQ2d at 1966.

In other words, the disclosure must convey with reasonable clarity to
those skilled in the art that the inventor was in possession of the invention.
Vas-Cath, Inc. v. Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991).
Compliance with the written description requirement is a question of fact.
Id., at 1562-63.
The test for compliance for 35 U.S.C. § 112, second paragraph, is
whether the claims set out and circumscribe a particular area with a
reasonable degree of precision and particularity when read in light of the
application disclosure as they would be interpreted by one of ordinary skill
in the art. In re Moore, 439 F.2d 1232, 1235 (CCPA 1971).
“A claim is anticipated only if each and every element as set forth in
the claim is found, either expressly or inherently described, in a single prior
art reference.” Verdegaal Bros. v. Union Oil Co. of Cal., 814 F.2d 628, 631
(Fed. Cir. 1987).

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ANALYSIS
We confine our discussion to appealed claim 1, which contains claim
limitations representative of the arguments made by Appellant pursuant to
37 C.F.R. § 41.37(c)(1)(vii).7
Rejection of claims 1, 3, and 12-16 under 35 U.S.C. § 112, first paragraph
as failing to comply with the written description requirement

“Outside an Electric Field”

Appellant has not demonstrated that “outside an electric field,” as
recited in claim 1, is supported by the Specification as originally filed. In
the instant case, the Specification’s silence as to whether an electric field is
present when contacting a chlorite salt solution with a cation exchange
column does not constitute an adequate basis for a claim limitation
excluding an electric field. See Ex parte Grasselli, 231 USPQ 393 (BPAI
1983), aff’d mem., 783 F.2d 453 (Fed Cir. 1984). Use of an electric field in
a regeneration step, which is a separate step of the process, has no bearing as
to whether an electric field is applied in contacting a chlorite salt solution
with a cation exchange material. (See FF 3). Moreover, Appellant’s
argument that those skilled in the art would understand that no electric field
is needed to exchange cations does not mean that cation exchange is
prohibited from taking place in the presence of an electric field.
We are unpersuaded by Appellant’s additional argument that because
the recited process requires that the substitution of cations in the chlorite

7 Only those arguments actually made by Appellant have been considered in
this decision. Arguments which Appellant could have made but chose not to
make have not been considered and are deemed to be waived. See 37 C.F.R.
§ 41.37 (c)(1)(vii) (2007).
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solution is “essentially complete,” the process is performed “outside an
electric field.” Appellant’s evidence is not sufficient to rebut the Examiner’s
position that one of ordinary skill in the art would have reasonably
considered both the yields obtained in an electric field and outside an
electric field as indicative of “essentially complete substitution.” (Ans. 11).
Specifically, the experimental results in the First DiMascio Declaration are
based on two examples, one performed within an electric field and one
performed outside an electric field. (FF 4-6). The yields reported for each
experiment are based on the amount of chlorine dioxide obtained, not
chlorous acid. (See FF 7).8 Further, the two experiments differ not only in
whether an electric field is present, but also in several other variables such as
flow rate, concentration, and temperature. Further, only one voltage and
current was tested. (FF 5 and 6.)

“Essentially Complete Substitution”
Appellant has also not demonstrated that the Specification sufficiently
supports “essentially complete substitution of cations,” recited in claim 1.
Specifically, the term “substantially pure” as disclosed in the Specification
does not support “essentially complete” as recited in the claim. (See Ans.
12). The statements made in the Second DiMascio Declaration relied on by
Appellant to establish a correlation between these terms (See FF 8 and 9) are
not persuasive. The Second DiMascio Declaration merely expresses
opinions that are not supported by sufficient facts. In re Chilowsky, 306

8 Appellant states that the yields of chlorous acid may be difficult to measure
(First DiMascio Declaration, Attachment 1). Nevertheless, there is an
additional step in the examples, conversion of chlorous acid to chlorine
dioxide, which may also account for the difference in yields obtained.
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F.2d 908, 916 (CCPA 1962). Thus, Appellant has not provided persuasive
evidence that a “substantially pure chlorous acid solution” inherently implies
an “essentially complete substitution of cations.” Further, the First
DiMascio Declaration fails to provide the required support for the reasons
discussed supra.
Appellant also relies on statements made during the prosecution of
Sampson as evidence that one of ordinary skill in the art would understand
that “essentially complete substitution” is inherent to the claimed process.
(FF 11). However, the statements made during the prosecution of Sampson
are based on Sampson’s disclosure, which is different than the present
Specification. Compare, for instance, Sampson’s disclosure of a “pure
chlorous acid solution” with Appellant’s disclosure of “substantially pure”
chlorous acid. (See FF 2 and 10, Ans. 14). Thus, there is an express
difference in degree of purity between the two disclosures. Moreover, the
statements in Sampson were made with respect to the term “essentially
pure,” which is a different term altogether than either “essentially complete”
or “substantially pure” used by Appellant. (See FF 11). Therefore, because
Sampson’s disclosure is different than the present Specification, we do not
find Sampson persuasive in defining “essentially complete” as it relates to
the present Specification. See Phillips, supra.

Rejection of claims 1, 3, and 12-16 under 35 U.S.C. § 112, second
paragraph

Appellant relies on similar arguments as discussed above for the
position that the term “essentially” is definite. (See App. Br. 9). However,
the Specification provides no standard to reasonably apprise one of ordinary
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skill in the art of the scope of the claim. (See Ans. 5). Indeed, Appellant
points to one term of degree “substantially” in order to provide guidance as
to another equally unclear term of degree “essentially.” (See Ans. 12). As
discussed above, the Declarations relied on by Appellant to establish that
substantially pure means “>99% pure” are not based on sufficient factual
evidence and do not provide a reasonable degree of precision and
particularity for the terms of degree relied on by Appellant.

Rejection of claims 1, 3, 12, and 14 under 35 U.S.C. § 102(e) as being
anticipated by Sampson

In light of our discussion supra, that Appellant has not shown that the
level of purity of chlorous acid depends on the absence of an electric field,
the Examiner’s position that the “pure” chlorous acid produced in Sampson
must have been produced outside of an electric field is not sufficiently
supported by the record. The Examiner’s alternative reasoning, that because
there are only two choices in performing Sampson’s process, with an electric
field and without an electric field, Sampson discloses a process with
sufficient specificity to anticipate the claimed process, is also insufficient.
The Examiner’s logic fails to consider all the conditions that could be
excluded from Sampson’s process based on a similar rationale that Sampson
is silent with respect to those conditions. In other words, Sampson’s process
would include other scenarios or choices besides excluding an electric field,
such as carrying out the process in the absence of heat. Therefore, to apply
the Examiner’s logic, one would have to consider other scenarios or choices
rather than just the two scenarios or choices discussed by the Examiner.
Thus, Sampson fails to disclose that the claimed process is carried out in the
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absence of an electric field with sufficient specificity. Accordingly, we will
not sustain the Examiner’s rejection.

CONCLUSION
Appellant has failed to demonstrate that the Examiner reversibly erred
in finding that “outside an electric field” as recited in claim 1 is not
described in the Specification in such a way as to reasonably convey to one
skilled in the art that the inventor, at the time the application was filed, had
possession of the claimed invention.
Appellant has failed to demonstrate that the Examiner reversibly erred
in finding that “essentially complete substitution” as recited in claim 1 is not
described in the Specification in such a way as to reasonably convey to one
skilled in the art that the inventor, at the time the application was filed, had
possession of the claimed invention.
Appellant has failed to demonstrate that the Examiner reversibly erred
in determining that “essentially complete substitution” as recited in claim 1
is a term of degree that would not allow one of ordinary skill in the art to
determine the scope of the claims, thus rendering the claim indefinite.
The Examiner reversibly erred in finding that Sampson’s process was
carried out outside of an electric field.
ORDER
We affirm the Examiner’s decision rejecting claims 1, 3, and 12-16
under 35 U.S.C. § 112, first paragraph as failing to comply with the written
description requirement.
We affirm the Examiner’s decision rejecting claims 1, 3, and 12-16
under 35 U.S.C. § 112, second paragraph as being indefinite for failing to
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particularly point out and distinctly claim the subject matter which applicant
regards as the invention.
We reverse the Examiner’s decision rejecting claims 1, 3, 12, and 14
under 35 U.S.C. § 102(e) as being anticipated by Sampson.

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)(v).
AFFIRMED

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