Ex Parte Woodruff et al

Board of Patent Appeals and Interferences

Feb 24, 2011

10376261 (B.P.A.I. Feb. 24, 2011)

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
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APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
10/376,261 03/03/2003 Thomas E. Woodruff 13877/26301 3357
26646 7590 02/24/2011
KENYON & KENYON LLP
ONE BROADWAY
NEW YORK, NY 10004
EXAMINER
NGUYEN, NGOC YEN M
ART UNIT PAPER NUMBER
1734
MAIL DATE DELIVERY MODE
02/24/2011 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte THOMAS E. WOODRUFF and
JAMES L. JEFFERSON
____________

Appeal 2010-003714
Application 10/376,261
Technology Center 1700
____________

Before CHUNG K. PAK, PETER F. KRATZ, and CATHERINE Q. TIMM,
Administrative Patent Judges.

PAK, Administrative Patent Judge.

DECISION ON APPEAL1

1 The two-month time period for filing an appeal or commencing a civil
action, as recited in 37 C.F.R. § 1.304, or for filing a request for rehearing,
as recited in 37 C.F.R. § 41.52, begins to run from the “MAIL DATE”
(paper delivery mode) or the “NOTIFICATION DATE” (electronic delivery
mode) shown on the PTOL-90A cover letter attached to this decision.
Appeal 2010-003714
Application 10/376,261

2
Appellants appeal under 35 U.S.C. § 134(a) from the Examiner’s final
rejection of claims 1, 2, 4 through 14, 16, 17 and 22.2 Claims 15 and 18
through 21, the other claims pending in the above-identified application,
stand withdrawn from consideration by the Examiner. An oral hearing was
held on February 9, 2011. We have jurisdiction under 35 U.S.C. § 6.
STATEMENT OF THE CASE
The subject matter on appeal is directed to “a process . . . for
producing chlorine dioxide from a mineral acid, alkali metal chlorate and
hydrogen peroxide” (Spec. 1, ll. 3-4). Details of the appealed subject matter
are recited in representative claims 1 and 22 reproduced from the Claims
Appendix to the Appeal Brief as shown below:
1. A process for continuously producing chlorine dioxide
comprising the steps of:
diluting sulfuric acid of an initial concentration
exceeding about 90 wt% with water to a concentration from
about 60 to about 90 wt%;
bringing the diluted sulfuric acid to a temperature below
about 100°C;
feeding to a reactor the diluted sulfuric acid having a
temperature below about 100°C through a first feeding nozzle;
feeding to said reactor an aqueous solution comprising
alkali metal chlorate and hydrogen peroxide through a second
feeding nozzle, wherein said first and second feeding nozzles
are opposite to and directed against each other;

2 See generally the Appeal Brief filed July 15, 2009 (“App. Br.), the
Examiner’s Answer dated October 14, 2009 (“Ans.”), and the Reply Brief
filed December 14, 2009 (“Reply Br.”).

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reacting the alkali metal chlorate with the mineral acid
and the hydrogen peroxide to form a product stream containing
chlorine dioxide; and,
withdrawing the product stream from the reactor.
22. A process as claimed in claim 1, wherein chlorine
dioxide is produced at a rate of at least about 8 lb/hr.
As evidence of unpatentability of the claimed subject matter, the
Examiner relies on the following sole reference at page 4 of the Answer:
Gravitt US 2003/0031621 A1 Feb. 13, 2003

Appellants seek review of the following grounds of rejection set forth
by the Examiner in the Answer:
1) Claims 1, 2, 4 through 14, 16, 17, and 22 under 35 U.S.C.
§ 103(a) as unpatentable over the disclosure of Gravitt; and
2) Claim 22 under 34 U.S.C. § 112, first paragraph, as lacking
written descriptive support for the presently claimed subject matter in the
application disclosure as originally filed.
RELEVENT FACTS, PRINCIPLES OF LAW, ISSUE, ANALYSIS, AND
CONCLUSIONS
I. OBVIOUSNESS UNDER § 103(a)3
Appellants have not disputed the Examiner’s finding that Gravitt
teaches or would have suggested a process for continuously producing
chlorine dioxide comprising steps of feeding a mineral acid, such as sulfuric
acid, to a reactor via a first feeding nozzle, feeding an aqueous solution

3 With respect to this obviousness rejection set forth by the Examiner,
Appellants have not separately argued the claims on appeal in the Appeal
Brief. (See App. Br. 5-9.) Accordingly, for purposes of this appeal, we limit
our discussion to claim 1 consistent with 37 C.F. R. § 41.37(c)(1)(vii).
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comprising alkali metal chlorate and hydrogen peroxide to the same reactor
via a second feeding nozzle located opposite to the first feeding nozzle,
reacting the alkali metal chlorate with the mineral acid and hydrogen
peroxide at a sufficiently low temperature (a temperature below 100oC, i.e.,
57.2oC) to form a product stream containing chlorine dioxide, and
withdrawing the product stream from the reactor. (Compare Ans. 5-7 with
App. Br. 5-9 and Reply Br. 2-9; see also Gravitt, paras. 0025 and 0042).
Rather, Appellants contend that Gravitt does not teach or suggest steps of
diluting the sulfuric acid of an initial concentration exceeding 90 wt% with
water to a concentration from about 60 to about 90 wt% and bringing the
diluted sulfuric acid to a temperature below about 100oC prior to feeding it
to the reactor. (See, e.g., App. Br. 7 and 9 and Reply Br. 2-4). In support of
this position, Appellants focus on Gravitt’s disclosure relating to the use of
commercially available 93 wt% sulfuric acid, without dilution, in its novel
reaction system. (See, e.g., App. Br. 7 and Reply Br. 2-3).
Thus, the first critical question is: Would the teachings of Gravitt as a
whole have suggested using a diluted and cooled sulfuric acid in the manner
claimed in its continuous chlorine dioxide making apparatus and process,
with a reasonable expectation of successfully producing a product stream
containing chlorine dioxide within the meaning of 35 U.S.C. § 103(a)? On
this record, we answer this question in the affirmative.
As is apparent from pages 6 and 12 of the Answer, Gravitt teaches
that its apparatus for producing chlorine dioxide from alkali metal chlorate
in the presence of a mineral acid, inclusive of those diluted, in a highly
efficient manner “also permits the use of the more commonly available 93%
sulfuric acid without pre-cooling of the acid to compensate for the heat of
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dilution of the sulfuric acid” (emphasis added). (See para. 0025). It can be
inferred from this teaching that Gravitt’s apparatus, unlike other
conventional apparatuses, can be used with the more commonly available
93 wt% sulfuric acid even though it, like the other conventional apparatuses,
is also useful for the production of chlorine dioxide from alkali metal
chlorate in the presence of the diluted and cooled sulfuric acid. Consistent
with this teaching, Gravitt also mentions conventional processes for forming
chlorine dioxide involving the dilution of sulfuric acid and usage of a
70 wt% or greater sulfuric acid (paras. 0009 and 0012). Gravitt further
associates at paragraph 0029, using the more commonly available 93 wt%
sulfuric acid as providing an “additional” advantage, implying that the other
known acids, e.g., diluted acids, inclusive of those claimed, can be used in
its apparatus, without the additional advantage. The Examiner has also
correctly found at pages 6 and 7 of the Answer that cooling the diluted
sulfuric acid to a temperature below 100oC is well within the ambit of one of
ordinary skill in the art since the desired temperature at which the reaction is
maintained in the reactor must be at a sufficiently low temperature, e.g.,
57.2oC, as indicated supra.
Given the above teachings, we concur with the Examiner that Gravitt
as a whole would have led one of ordinary skill in the art to use the diluted
and cooled commercially available 93 wt% sulfuric acid in the claimed
manner in its continuous chlorine dioxide making apparatus and process,
with a reasonable expectation of successfully producing a product stream
containing chlorine dioxide.4 See KSR Int’l. Co. v. Teleflex Inc., 550 U.S.

4 Appellants have separately argued nonobviousness of the limitation of
claim 22 for the first time in this appeal at page 4 of the Reply Brief.
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398, 418 (2007) (In making an obviousness determination, one of ordinary
skill in the art “can take account of the inferences and creative steps that a
person of ordinary skill in the art would employ.”); In re Preda, 401 F.2d
825, 826 (CCPA 1968) (“[I]n considering the disclosure of a reference, it is
proper to take into account not only specific teachings of the reference but
also the inferences which one skilled in the art would reasonably be
expected to draw therefrom.”); see also In re Lamberti, 545 F.2d 747, 750
(CCPA 1976) (“[A]ll disclosures of the prior art, including unpreferred
embodiments, must be considered.”).
Appellants contend that the use of the claimed diluted sulfuric acid
having 60 to 90 wt% sulfuric acid concentration and the claimed temperature
below 100oC unexpectedly allow stable operation of the claimed chlorine
dioxide producing process at a higher production rate of chlorine dioxide.
(See App. Br. 7-10 and Reply Br. 6-7). In support of this position,

However, Appellants have not presented such separate argument in the
Appeal Brief as required by 37 C.F. R. § 41.37(c)(1)(vii) for separate
consideration. Thus, as indicated supra, claim 22 stands or falls with its
independent claim 1 consistent with 37 C.F. R. § 41.37(c)(1)(vii). In any
event, as correctly found by the Examiner at pages 9 and 10 of the Answer,
we note that Gravitt teaches that “chlorine dioxide production rates may be
increased, without increased pump pressure, in a reactor of given size by
increasing the number of spray nozzles” (para. 0027). The term “a reactor of
given size” includes any reactor size, including those large enough to
accommodate the large amounts of reactants for the purpose of increasing
the rate of chlorine dioxide production. Thus, we concur with the Examiner
that one of ordinary skill in the art would have been led to employ an
appropriate number of spray nozzles and/or a reactor of desired size
corresponding to the amounts of reactants required for obtaining desired
chlorine dioxide production rates, including those claimed, in the chlorine
dioxide making process of Gravitt.

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Appellants rely on a declaration under 37 C.F.R. § 1.132 executed by
Thomas E. Woodruff, a named co-inventor, on January 30, 2008 (hereinafter
referred to as the “Woodruff Declaration”). (Id.)
The Woodruff Declaration states that the Example of the subject
application shows that “stable operation without decompositions of chlorine
dioxide was achieved,” when a tubular reactor having a length of 610 mm
and a diameter of 78 mm5 operated at a temperature of 50oC was used to
react a stabilized aqueous solution of 40 wt% sodium chlorate and 10 wt%
hydrogen peroxide with a diluted sulfuric acid having a 78 wt% sulfuric
concentration, which was cooled to 30oC. (See para. 4). The Woodruff
Declaration also indicates that cooling the diluted sulfuric acid to 30oC was
important in achieving stable operation, without specifying the rate of
chlorine dioxide production. (Id.) The Example of the subject application
shows the rates of chlorine dioxide production of 8 lb/hr and 35 lb/hr for two
stable runs, respectively (Spec. 6). Further, the Woodruff Declaration states
that the Examples of Gravitt show that a spherical reactor having about 1
inch diameter operating at a temperature of 135 oF (57.2 oC) can be used to
react an aqueous solution comprised of 34 wt% sodium chlorate, 0.6 wt%
sodium chloride, and 11.3 wt% hydrogen peroxide with 17ml/min. of 93
wt% sulfuric acid to provide stable operation at a production rate of 1.6 lb of
chlorine dioxide per hour. (See para. 5). When the same reactor and feed
chemicals in the Example of the subject application were used, together with
93 wt% sulfuric acid, to produce a higher production rate of 4 lb of chlorine

5 Appellants do not dispute the Examiner’s finding that this diameter
corresponds to 3 inches, which is three times larger than the one exemplified
in Gravitt. (Compare Ans. 11 with App. Br. 7-10 and Reply Br. 6-7).
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dioxide per hour at a pressure of 24 inch Hg and a temperature of 140 to
150oF, the reactor was unable to provide stable conditions and cannot be
operated. (See para. 6). The Woodruff Declaration does not aver that the
stable operation achieved by Appellants’ tubular reactor, reaction conditions
and cooling temperature indicated above was unexpected by one of ordinary
skill in the art. (See generally the Woodruff Declaration). Nor does the
Woodruff Declaration aver that the unstable operation achieved by using the
93 wt% sulfuric acid, together with Appellants’ tubular reactor and reaction
conditions and cooling temperature useful for the diluted and cooled sulfuric
acid was unexpected by one of ordinary skill in the art. (Id.)
The second critical question here is: Have Appellants demonstrated
that the claimed subject matter as a whole imparts unexpected results
relative to the invention taught by Gravitt, thereby rebutting any prima facie
case of obviousness established by the Examiner? On this record, we
answer this question in the negative.
It is well settled that Appellants have the burden of showing that the
claimed invention imparts not just any improvement, but an unexpected
improvement. In re Klosak, 455 F.2d 1077, 1080 (CCPA 1972); see also In
re Skoner, 517 F.2d 947, 948 (CCPA 1975) (Expected results are evidence
of obviousness just as unexpected results are evidence of unobviousness).
However, as correctly found by the Examiner at page 11 of the Answer,
Appellants have not shown that the allegedly improved stable operation
resulting from using the claimed diluted and cooled sulfuric acid relative to
using the 93 %wt sulfuric acid in Gravitt’s process is unexpected. In this
regard, the Examiner has correctly found that Gravitt teaches that its
apparatus, i.e., a spherical reactor, allows the use of the commonly available
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93 wt% sulfuric acid to provide a desired chlorine dioxide production rate
(Ans. 8). As explained by the Examiner, Gravitt teaches increasing the
number of nozzles employed and desired vacuum in its spherical reactor of
given size to obtain an increased chlorine dioxide production rate (Ans. 8
and 9). Nowhere does Gravitt teach that reactors (e.g., the tubular reactor
used in the Example of the subject application) other than its spherical
reactor are suitable for using the 93 wt% sulfuric acid to obtain a desired
chlorine dioxide production rate (Gravitt, paras. 0025 and 0027). In other
words, one of ordinary skill in the art would have reasonably expected from
the teachings of Gravitt that the tubular reactor used in the Example of the
subject application is not useful for obtaining stable operation at a desired
high chlorine dioxide production rate as evidenced by the Woodruff
Declaration. Indeed, the Woodruff Declaration does not aver that the
alleged improvement resulting from using a tubular reactor with the claimed
diluted and cooled sulfuric acid relative to using a tubular reactor (not the
spherical reactor used in Gravitt’s Examples) with the commonly available
93 wt% sulfuric is unexpected. (See the Declaration 1-3).
More importantly, as also correctly found by the Examiner at pages 9
and 10 of the Answer, the claims on appeal are not limited to the allegedly
improved “stable operation” at a higher production rate. In other words,
Appellants have not shown that all the claimed conditions, e.g., the acid
diluted to a concentration of about 90 wt percent and cooled to 99.99oC (less
than temperature below 100oC), a reactor having one inch diameter, and a
reaction temperature of 99.99oC, are capable of producing the alleged
unexpected stable operation at a higher production rate. While the showing
in the Woodruff Declaration is limited to using a tubular reactor having a 3
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inch diameter operated at a temperature of 50oC to react a stabilized aqueous
solution of 40 wt% sodium chlorate and 10 wt% hydrogen peroxide with a
diluted sulfuric acid having the 78 wt% sulfuric concentration cooled to
30oC to obtain stable operation at a high production rate of either 8 lb/hour
or 35 lb/hour, the claims on appeal are not so limited. There is no
reasonable basis to believe that the result (stable operation) applicable to the
specific conditions in the Woodruff Declaration is also applicable to all of
the conditions embraced by the claims on appeal, especially since Appellants
have not disputed the Examiner’s finding that “[t]he diluting step in
Appellants’ claims can be very minimal (e.g., diluting 93 wt% sulfuric acid
to obtain 92 wt% sulfuric acid)” such that the same or substantially the same
results are expected from using such claimed diluted sulfuric acid and
Gravitt’s preferred 93 wt% sulfuric acid. (Compare Ans. 9 with App. Br. 7-
10 and Reply Br. 6-7). It follows that Appellants have not demonstrated
that the allegedly unexpected stable operation shown in the Woodruff
Declaration is commensurate in scope with the protection sought by the
claims on appeal. In re Grasselli, 713 F.2d 731, 743 (Fed. Cir. 1983); In re
Clemens, 622 F.2d 1029, 1035 (CCPA 1980).
Accordingly, based on the totality of the record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence weighs most heavily in favor of obviousness of
the claimed subject matter within the meaning of 35 U.S.C. § 103(a).
II. WRITTEN DESCRIPTION UNDER § 112, 1st PARGRAPH
The Examiner has found that the phrase “a [chlorine dioxide
production] rate of at least about 8 lb/hr” recited in claim 22 violates the
written description requirement of the first paragraph of 35 U.S.C. § 112
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since such phrase includes chlorine production rates which are far outside of
the chlorine production rates described in the application disclosure as
originally filed (Ans. 4-5 and 7-8). On the other hand, Appellants contend
that the inventors had possession of such chlorine dioxide production rates
(which are said to be possible only under stable conditions) based on the
objectives and the Example and Table provided at pages 1 and 6 of the
Specification as originally filed (App. Br. 4-5 and Reply Br. 7-9).
Appellants also refer to the Woodruff Declaration which is said to show that
the invention described in the Specification is capable of providing the
chlorine dioxide production rates recited in claim 22. (Id.).
The dispositive question is: Has the Examiner erred in finding that the
newly added phrase “a [chlorine dioxide production] rate of at least about 8
lb/hr” (emphasis added) recited in claim 22 violates the written description
requirement of the first paragraph of 35 U.S.C. § 112? On this record, we
answer this question in the negative.
As correctly found by the Examiner at pages 4, 5, 7 and 8 of the
Answer, the Specification, as originally filed, does not provide written
descriptive support for the newly claimed chlorine dioxide production rates.
The phrase “at least about 8 lb/hr” recited in claim 22 has no upper limit and
includes those chlorine dioxide production rates which are far outside of the
production rate of 35 lb/hour described in the Specification as originally
filed. See In re Wertheim, 541 F.2d 257, 263-64(CCPA 1976) (holding that
the new limitation “at least 35%” violates the written description
requirement since it has no upper limit and causes the claim to read literally
on embodiments outside of the “25% to 60%” range described in the
Specification as originally filed).
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Appellants contend that the conditions for stable operation described
in the Specification allow for high chlorine dioxide production rates,
inclusive of those recited in claim 22. Yet, neither the Woodruff Declaration
nor the Specification shows that the conditions (stable operation) described
in the application disclosure, as originally filed, are capable of producing
chlorine dioxide production rates far greater than the production rate of 35
lb/hour. The Specification only describes obtaining a chlorine dioxide
production rate as high as 35 lb/hour under the conditions described (p. 6).
The Woodruff Declaration only states that the example supposedly
representative of the claimed subject matter achieves stable operation,
without specifying any higher rate of chlorine dioxide production (para. 4).
Accordingly, based on the totality of record, including due
consideration of Appellants’ arguments and evidence, we determine that the
preponderance of evidence supports the Examiner’s finding that the
application disclosure as originally filed does not reasonably convey to one
of ordinary skill in the art that the inventors had possession the claimed
chlorine dioxide production rate of “at least about 8 lb/hr” at the time the
instant application was filed.

ORDER
Upon consideration of the record, and for the reasons given, it is
ORDERED that the decision of the Examiner to reject claims 1, 2, 4
through 14, 16, 17, and 22 under 35 U.S.C. § 103(a) as unpatentable over the
disclosure of Gravitt is AFFIRMED; and
FURTHER ORDERED that the decision of the Examiner to reject
claim 22 under 34 U.S.C. § 112, first paragraph, as lacking written
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descriptive support for the presently claimed subject matter in the
application disclosure as originally filed is AFFIRMED; and,
FURTHER ORDERED that 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)(iv).
AFFIRMED

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