Ex Parte Schwab

Patent Trial and Appeal Board

Sep 24, 2013

12503938 (P.T.A.B. Sep. 24, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
12/503,938 07/16/2009 Peter SCHWAB 512425-2186 9130
20999 7590 09/24/2013
FROMMER LAWRENCE & HAUG
745 FIFTH AVENUE- 10TH FL.
NEW YORK, NY 10151
EXAMINER
ASDJODI, MOHAMMADREZA
ART UNIT PAPER NUMBER
1767
MAIL DATE DELIVERY MODE
09/24/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte PETER SCHWAB
____________

Appeal 2012-006298
Application 12/503,938
Technology Center1700
____________

Before BRADLEY R. GARRIS, CHUNG K. PAK, and CATHERINE Q.
TIMM, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-5, 7-13, and 20. We have jurisdiction under
35 U.S.C. § 6.
We REVERSE.
Appellant claims a cleaning composition comprising a compressed
gas (e.g., CO2) and at least one ionic liquid detergent wherein the mass ratio
of compressed gas to ionic liquids is from 1,000,000:1 to 500:1 (sole
independent claim 1).
Appeal 2012-006298
Application 12/503,938

2

A copy of representative claim 1, taken from the Claims Appendix of
the Appeal Brief, appears below.
1. A cleaning composition comprising a compressed gas and at least
one detergent, characterized in that at least one detergent is an ionic liquid
and the mass ratio of compressed gas to ionic liquids is from 1,000,000:1 to
500:1.

Under 35 U.S.C. § 102 (b), the Examiner rejects sole independent
claim 1 as well as dependent claims 2-5, 11, 12, and 20 as anticipated by
Storey-Laubach et al. (Storey-Laubach, US 6,280,481 B1, patented Aug. 28,
2001) as evidenced by Jureller et al. (Jureller, US 5,676,705, patented Oct.
14, 1997).
Under 35 U.S.C. § 103(a), the Examiner rejects dependent claims
7-10 and 13 as unpatentable over Storey-Laubach.
The Examiner finds that claim 1 is anticipated by Storey-Laubach's
disclosure of a dry cleaning composition comprising at least 30%
compressed CO2 gas and surfactant detergents "such as methyl sulfates (i.e.
soluble anionic and cationic surfactants, and their salts which render[] the
liquid as ionic)" (Ans. 5).
In contesting the Examiner's finding of anticipation, Appellant
correctly explains that "Storey-Laubach only mentions methyl sulfates
within the context of a generic list of surfactants (see col. 3, line 50 through
col. 6, line 4) and does not describe methyl sulfate as being representative of
an ionic liquid" (Br. para. bridging 4-5). Appellant also correctly explains
that Storey-Laubach's disclosure of 30% carbon dioxide corresponds to a
ratio of 300:1 which is outside the claim 1 range (id. at 5). For these
Appeal 2012-006298
Application 12/503,938

3
reasons, Appellants argue that "Stor[e]y-Laubach does not anticipate the
appellants’ [sic] claimed invention because every element of the appellants’
claimed invention is not taught, nor do the existing elements show a cleaning
composition in as complete a detail as is contained in the appellants’ claims"
(id.).
Appellant's argument is persuasive.
For the § 102 rejection to be proper, the Storey-Laubach reference
must clearly and unequivocally disclose the claim 1 composition without
any need for picking, choosing, and combining various disclosures not
directly related to each other by the teachings of the reference. See In re
Arkley, 455 F.2d 586, 587-88 (CCPA 1972). While such picking and
choosing may be entirely proper in a § 103 obviousness rejection, it has no
place in a § 102 anticipation rejection. Id.
The cited disclosures of Storey-Laubach include extensive lists of
detergents surfactants, none of which are characterized as ionic liquids.
Therefore, the claimed ionic liquid is obtained only by selectively picking
and choosing from Storey-Laubach's surfactants one which coincidentally
satisfies the ionic liquid limitation. Similarly, the claimed mass ratio is
obtained only by selectively picking and choosing from Storey-Laubach's at
least 30% CO2 concentrations, a concentration which yields a ratio falling
within the claim 1 range. As explained above, such picking and choosing
has no place in a § 102 anticipation rejection.
It follows that we will not sustain the Examiner's § 102 rejection of
claims 1-5, 11, 12, and 20.

Appeal 2012-006298
Application 12/503,938

4
Appellant points out that the obviousness rejection on appeal does not
address the above differences between the claim 1 cleaning composition and
Storey-Laubach (Br. 6), and the Examiner does not contend otherwise. As a
consequence, we also will not sustain the Examiner's § 103 rejection of
claim 7-10 and 13.
The decision of the Examiner is reversed.
REVERSED

cam