BALFE, Michael Charles. et al.

Patent Trials and Appeals Board

Oct 8, 2019

14150005 - (D) (P.T.A.B. Oct. 8, 2019)

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.
14/150,005 01/08/2014 Michael Charles BALFE 310309-4_US 3519
132545 7590 10/08/2019
GROGAN, TUCCILLO & VANDERLEEDEN, LLP
1350 Main Street, 5th Floor
Springfield, MA 01103
EXAMINER
NASSIRI MOTLAGH, ANITA
ART UNIT PAPER NUMBER
1734
NOTIFICATION DATE DELIVERY MODE
10/08/2019 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):
docket@gtv-ip.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MICHAEL CHARLIES BALFE and PETER KNIESBURGES
____________

Appeal 2019-001246
Application 14/150,005
Technology Center 1700
____________

Before LINDA M. GAUDETTE, MONTÉ T. SQUIRE, and
JANE E. INGLESE, Administrative Patent Judges.

INGLESE, Administrative Patent Judge.

DECISION ON APPEAL
Appellant1 requests our review under 35 U.S.C. § 134(a) of the
Examiner’s decision to finally reject claims 1–4, 7–11, 13–15, 17, and 182.
We have jurisdiction over this appeal under 35 U.S.C. § 6(b).
We AFFIRM.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies the real party in interest as General
Electric Technology GmbH. Appeal Brief filed June 5, 2018 (“Br.”), 2.
2 Although the Final Office Action entered November 3, 2017 (“Final Act.”)
indicates that claims 6 and 12 stand rejected (Final Act. 1, 2, 4–5), Appellant
cancelled claims 6 and 12 in an amendment filed January 3, 2018, and the
Examiner confirmed entry of the amendments in an Advisory Action entered
February 1, 2018.
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CLAIMED SUBJECT MATTER
Appellant claims a method and system for cleaning a process gas
containing carbon dioxide and contaminants. Br. 5–6. Claim 1 illustrates
the subject matter on appeal, and is reproduced below with contested
language italicized:
1. A method of cleaning a process gas containing carbon
dioxide and contaminants, the method comprising:
bringing the process gas into direct contact with an
alkaline solution or slurry, and capturing in the alkaline
solution or slurry at least a part of the contaminants of the
process gas;
bringing the process gas depleted of the contaminants,
after capturing at least the part of the contaminants of the
process gas in the alkaline solution or slurry into direct contact
with a cooling liquid, separate from the alkaline solution or
slurry, to form a cooled process gas,
wherein the contaminants comprise sulfur dioxide, heavy
metals, and particulate material; and
recirculating the alkaline solution or slurry, after the
direct contact of the process gas with the alkaline solution or
slurry, to the process of bringing the process gas into direct
contact with the alkaline solution or slurry.

Claims Appendix filed June 21, 2018, 2 (emphasis and spacing added).
REJECTIONS
The Examiner maintains the following rejections in the Examiner’s
Answer entered September 19, 2018 (“Ans.”):
I. Claims 1, 3, 10, and 17 under 35 U.S.C. § 103(a) as
unpatentable over Dube3 in view of Gal4;

3 US 2011/0150733 A1, published June 23, 2011.
4 US 2008/0072762 A1, published March 27, 2008.
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II. Claim 2 under 35 U.S.C. § 103(a) as unpatentable over Dube in
view of Gal and Gal 8315;
III. Claim 4 under 35 U.S.C. § 103(a) as unpatentable over Dube in
view of Gal as evidenced by Bates6; and
IV. Claims 7–9 under 35 U.S.C. § 103(a) as unpatentable over
Dube in view of Gal and Emmer7;
V. Claim 11 under 35 U.S.C. § 103(a) as unpatentable over Dube
in view of Gal, Kobayashi8, and Gal 831;
VI. Claims 13–15 under 35 U.S.C. § 103(a) as unpatentable over
Dube in view of Gal, Kobayashi, and Emmer; and
VII. Claim 18 under 35 U.S.C. § 103(a) as unpatentable over Dube
in view of Gal, Kobayashi, Gal 831, and Gal 7339.
FACTUAL FINDINGS AND ANALYSIS
Upon consideration of the evidence relied upon in this appeal and
each of Appellant’s contentions, we affirm the Examiner’s rejections of
claims 1–4, 7–11, 13–15, 17, and 18 under 35 U.S.C. § 103(a), for the
reasons set forth in the Final Action, the Answer, and below.
We review appealed rejections for reversible error based on the
arguments and evidence the appellant provides for each issue the appellant
identifies. 37 C.F.R. § 41.37(c)(1)(iv); Ex parte Frye, 94 USPQ2d 1072,
1075 (BPAI 2010) (precedential) (cited with approval in In re Jung, 637

5 US 2010/0083831 A1, published April 8, 2010.
6 Roger G. Bates, et al., Calcium Hydroxide as a Highly Alkaline pH
Standard, 56 J. of Research of the National Bureau of Standards 305 (1956).
7 US 5,512,097, issued April 30, 1996.
8 US 2010/0074817 A1, published March 25, 2010.
9 US 2008/0178733 A1, published July 31, 2008.
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F.3d 1356, 1365 (Fed. Cir. 2011) (explaining that even if the Examiner had
failed to make a prima facie case, “it has long been the Board’s practice to
require an applicant to identify the alleged error in the examiner’s
rejections”)).
Rejection I: Claims 1, 3, 10, and 17 under 35 U.S.C. § 103(a)
as Unpatentable over Dube in view of Gal
Claims 1 and 10
Appellant argues claims 1 and 10 together on the basis of claim 1, to
which we accordingly limit our discussion. Br. 9–15; 37 C.F.R.
§ 41.37(c)(1)(iv).
Dube discloses a system and method for removing sulfur dioxide and
carbon dioxide from flue gas produced by combustion of fossil fuels, such as
oil or coal. Dube ¶¶ 2, 3, 8, 40. Dube discloses that the method comprises
contacting the flue gas with a scrubbing liquor comprising an alkaline
compound to remove sulfur dioxide from the flue gas, cooling the sulfur
dioxide-depleted flue gas to a temperature preferably below 20ºC, and
contacting the cooled, sulfur dioxide-depleted flue gas with an absorption
liquid comprising ammonia to remove carbon dioxide from the gas. Id. ¶¶ 9,
10, 21, 61.
The Examiner finds that although Dube discloses cooling the sulfur
dioxide-depleted flue gas before removing carbon dioxide from the gas,
Dube does not explicitly teach cooling the gas by bringing it into direct
contact with a cooling liquid, and the Examiner relies on Gal for suggesting
such a cooling process. Final Act. 3–4.
Gal discloses a system and method for removing carbon dioxide,
sulfur dioxide, particulate matter, and mercury contaminants from flue gas
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generated by combustion of coal and oil. Gal ¶¶ 1, 2 32. Gal discloses that
the method comprises cooling the combustion gas to a temperature of
0–20ºC by directly contacting the gas with cold water, and reacting the
cooled gas with an ammoniated solution. Id. ¶¶ 21, 24, 32. Gal discloses
that cooling the combustion gas before reacting it with ammonia results in
“high removal efficiency of the contaminants,” including efficient capture of
CO2. Id. ¶¶ 21, 23, 32.
In view of these disclosures in Gal, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to cool the sulfur dioxide-depleted flue gas produced
during Dube’s method by directly contacting the gas with cold water, as
disclosed in Gal, to achieve efficient capture of CO2 and other contaminants
when subsequently contacting the gas with an ammonia-containing
absorption liquid. Final Act. 4.
Appellant argues that the methods for removing contaminants
disclosed in Dube and Gal “require different processes” because Dube’s
method uses “a fresh scrubbing liquor for desulfurization” and Gal’s method
cools combustion gas to condense water from the gas, and uses the
condensed water to capture and remove contaminants. Br. 12–13.
Appellant argues that the Examiner “fails to demonstrate how any teaching
from Gal (i.e., condensing/cooling) would lead one to modify Dube
(counter-current chemical-based process) to arrive at the Appellant’s method
of using an alkaline solution or slurry to remove contaminants.” Br. 13–14.
The Examiner, however, provides a thorough, reasoned explanation,
grounded in sound factual findings, for why one of ordinary skill in the art
would have combined the relied-upon disclosures of Dube and Gal to arrive
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at the method recited in claim 1. Final Act. 3–4. Specifically, as discussed
above, Dube and Gal both disclose methods of removing contaminants,
including sulfur dioxide and carbon dioxide, from flue gas generated by
combustion of oil or coal. As also discussed above, Dube discloses
contacting flue gas with a scrubbing liquor comprising an alkaline
compound to remove sulfur dioxide from the gas, cooling the sulfur dioxide-
depleted flue gas to a temperature below 20ºC, and contacting the cooled,
sulfur dioxide-depleted flue gas with an absorption liquid comprising
ammonia to remove carbon dioxide from the gas.
As the Examiner determines (Final Act. 4), in view of Gal’s
disclosure that cooling combustion gas to a temperature of 0–20ºC by
directly contacting the gas with cold water before reacting the cooled gas
with an ammoniated solution results in “high removal efficiency of the
contaminants,” including efficient capture of carbon dioxide, particulate
matter, and mercury, it would have been obvious to one of ordinary skill in
the art at the time of Appellant’s invention to cool the sulfur dioxide-
depleted flue gas produced during Dube’s method by directly contacting the
gas with cold water, as recited in claim 1, before contacting the cooled,
sulfur dioxide-depleted flue gas with an ammoniated solution, to efficiently
remove contaminants from the gas, as disclosed in Gal.
Appellant’s conclusory arguments fail to identify any specific error in
the Examiner’s factual findings, or the Examiner’s rationale for the proposed
combination of the relied-upon disclosures of Dube and Gal, and Appellant’s
arguments, are, therefore, unpersuasive of reversible error in the Examiner’s
rejection.
Appellant argues that although Dube discloses removing sulfur
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dioxide from flue gas, Dube and Gal, alone or in combination, do not teach
or suggest removing heavy metal and particulate material contaminants from
flue gas as recited in claim 1. Br. 12–13.
As discussed above, however, Gal discloses that flue gas generated by
combustion of coal and oil includes carbon dioxide, sulfur dioxide,
particulate matter, and mercury (a heavy metal) contaminants. Gal ¶¶ 1, 2
32. Gal further discloses that cooling the combustion gas to a temperature of
0–20ºC by directly contacting the gas with cold water, and then reacting the
cooled gas with an ammoniated solution to remove the carbon dioxide,
particulate matter, and mercury contaminants with high efficiency. Id.
¶¶ 21, 23, 32. In view of this disclosure, one of ordinary skill in the art
would have understood that cooling the sulfur dioxide-depleted flue gas
produced during Dube’s method by directly contacting the gas with cold
water, as disclosed in Gal, would result in efficient capture of carbon
dioxide, particulate matter, and mercury, as recited in claim 1, when
subsequently contacting the gas with an ammonia-containing absorption
liquid, as disclosed in both Dube and Gal.
Appellant’s arguments are, therefore, unpersuasive of reversible error
in the Examiner’s rejection of claims 1 and 10 under 35 U.S.C. § 103(a),
which we accordingly sustain.
Claim 3
Claim 3 depends from claim 1 and recites that the alkaline solution or
slurry comprises NaOH or Ca(OH)2.
As the Examiner finds, Dube discloses that the alkaline compound of
the scrubbing liquor described in the reference may be Ca(OH)2. Final
Act. 4 (citing Dube ¶ 14).
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Although Appellant argues that Dube does not disclose NaOH
(Br. 14), as the Examiner explains in the Answer, claim 3 requires the
alkaline solution or slurry to comprise either NaOH or Ca(OH)2. Ans. 8.
Consequently, we are not persuaded of error in the Examiner’s
determination that the combination of Dube and Gal renders claim 3
obvious. We, accordingly, sustain the Examiner’s rejection of claim 3 under
35 U.S.C. § 103(a).
Claim 17
Independent claim 10 recites a gas cleaning system for cleaning a
process gas containing carbon dioxide and contaminants. Claim 17 depends
from claim 10 and recites that the process gas entering the alkaline cleaning
system is at a temperature of between 40°C and 80°C.
The Examiner finds that claim 17 is directed to “the manner in which
the system is operated and does not impart any structural limitations to the
system.” Final Act. 8.
Appellant argues that the Examiner’s rejection is conclusory and
“fails to state what modifications would be needed to the Dube/Gal system
‘such that the process gas entering the alkaline cleaning system is at a
temperature ranging between 40°C and 80°C.’” Br. 15–16.
Claim 10 recites a system for cleaning a process gas, and claim 17
recites the temperature of the process gas entering the system of claim 10.
Claim 17, therefore, recites the temperature of the material worked upon by
the system of claim 10. It is well-established that “[i]nclusion of the
material or article worked upon by a structure being claimed does not impart
patentability to the claims.” In re Otto, 312 F.2d 937, 940 (CCPA 1963);
see also In re Casey, 370 F.2d 576, 580–81 (CCPA 1967). The recitation in
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claim 17 of the temperature of the process gas entering the gas cleaning
system of claim 10, therefore, does not impart patentability to claim 17. We,
accordingly, sustain the Examiner’s rejection of claim 17 under 35 U.S.C.
§ 103(a).
Rejection II: Claim 2 under 35 U.S.C. § 103(a) as Unpatentable over Dube
in view of Gal and Gal 831 and Rejection III: Claim 4 under 35 U.S.C.
§ 103(a) as Unpatentable over Dube in view of Gal as evidenced by Bates
To address these rejections, Appellant asserts that each of claims 2
and 4 is patentable “at least by virtue of its dependency on independent
Claim 1,” because the additional references applied in these rejections (Gal
831 and Bates) are “not relied upon to remedy the deficiencies in the
rejection of independent Claim 1.” Br. 16–17. Because we are unpersuaded
of reversible error in the Examiner’s rejection of claim 1 for reasons
discussed above, Appellant’s position as to these rejections is also
unpersuasive of reversible error.
Rejection IV: Claims 7–9 under 35 U.S.C. § 103(a) as
Unpatentable over Dube in view of Gal and Emmer
Appellant argues claims 7–9 together on the basis of claim 7, to which
we accordingly limit our discussion. Br. 18–19; 37 C.F.R. § 41.37(c)(1)(iv).
Claim 7 depends from claim 1 and recites that the process gas is
generated by a cement production facility or a steel production facility.
The Examiner finds that although Dube discloses removing
contaminants from flue gas produced by combustion of fossil fuels, Dube
does not explicitly disclose that the flue gas is generated by a cement
production facility or a steel production facility. Final Act. 10. The
Examiner, however, relies on Emmer’s disclosure that waste gases produced
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during industrial processes that involve combustion of fossil fuels, such as
cement manufacturing, include sulfur oxide contaminants. Final Act. 10
(citing Emmer Abstr.); see also Emmer col. 1, ll. 15–22.
In view of this disclosure in Emmer, Appellant does not convince us
of error in the Examiner’s determination that it would have been obvious to
one of ordinary skill in the art at the time of Appellant’s invention to utilize
Dube’s method (as modified by Gal) of removing sulfur dioxide
contaminants from flue gas produced by combustion of fossil fuels to
remove sulfur dioxide contaminants from flue gas generated combustion of
fossil fuels during cement manufacturing, as recited in claim 7. We,
accordingly, sustain the Examiner’s rejection of claims 7–9 under 35 U.S.C.
§ 103(a).
Rejection V: Claim 11 under 35 U.S.C. § 103(a) as Unpatentable
over Dube in view of Gal, Kobayashi and Gal 831
Claim 11 depends from claim 10 and recites that the claimed gas
cleaning system comprises, in part, an ammonia removal system comprising
a gas-liquid contacting device operative for removing, at least partly,
ammonia from process gas that has been treated in a CO2-absorber and
comprises ammonia, by bringing the process gas containing the ammonia
into direct contact with a wash liquid.
The Examiner finds that Dube does not explicitly disclose an
ammonia removal system as recited in claim 11, and the Examiner relies on
Gal 831 for suggesting inclusion of such an ammonia removal system in
Dube’s system. Final Act. 13–14. Specifically, Gal 831 discloses that
ammonia efficiently removes CO2 and other contaminants from flue gas, but
explains that ammonia must be removed from treated gas to comply with
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emission standards. ¶ 5. Gal 831 discloses a system and method for
removing ammonia from a flue gas stream by washing the gas stream with a
liquid that absorbs ammonia from the gas. Id. ¶¶ 2, 6, 7. Gal 831 discloses
that flue gas so treated complies with emission standards, and may be
released to the environment due to the reduction or substantial elimination of
ammonia from the gas. Id. ¶¶ 30, 48.
In view of these disclosures in Gal 831, the Examiner concludes that it
would have been obvious to one of ordinary skill in the art at the time of
Appellant’s invention to include an ammonia removal system as disclosed in
Gal 831 in Dube’s system, to permit Dube’s system to use ammonia to
efficiently remove CO2 from flue gas, and to subsequently reduce the
concentration of ammonia in the treated flue gas, so that the gas complies
with emission standards, and can be released to the environment. Final
Act. 14; Ans. 11–12.
Appellant argues that the Examiner does not explain “what
modifications [of Dube’s system] would be needed” in view of the relied-
upon disclosures in Gal 831 to achieve the goals of complying with emission
standards and ensuring the efficiency of Dube’s system. Br. 20.
As discussed above, however, Gal 831 discloses that ammonia
efficiently removes CO2 and other contaminants from flue gas, and indicates
that removing ammonia from the treated flue gas ensures compliance with
emission standards. Gal 831 ¶ 5. In view of these disclosures in Gal 831,
one of ordinary skill in the art reasonably would have been led to modify
Dube’s system to include an ammonia removal system as disclosed in Gal
831, to reduce the concentration of ammonia in flue gas following ammonia
treatment to remove CO2, so that the treated gas can be released to the
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environment, while ensuring compliance with emission standards.
To the extent that Appellant asserts that one of ordinary skill in the art
would not have had sufficient skill to appropriately adapt Dube’s system to
successfully incorporate an ammonia removal system as disclosed in Gal
831, Appellant’s arguments do not demonstrate that such modification
would have been “uniquely challenging or difficult for one of ordinary skill
in the art.” Leapfrog Enters., Inc. v. Fisher-Price, Inc., 485 F.3d 1157, 1162
(Fed. Cir. 2007) (citing KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 418–
419 (2007)); In re Sovish, 769 F.2d 738, 743 (Fed. Cir. 1985) (In an
obviousness assessment, skill is presumed on the part of the artisan, rather
than the lack thereof.).
We, accordingly, sustain the Examiner’s rejection of claim 11 under
35 U.S.C. § 103(a).
Rejection VI: Claims 13–15 under 35 U.S.C. § 103(a) as
Unpatentable over Dube in view of Gal, Kobayashi, and Emmer
Claims 13–15 depend from independent claim 10. Appellant argues
that the additional references applied in the rejection of claims 13–15,
Kobayashi and Emmer, do not remedy the deficiencies of Dube and Gal with
respect to the Examiner’s rejection of claim 10. Br. 22. Appellant further
argues that although the Examiner appears to rely on Kobayashi in rejecting
claims 13–15, the Examiner does not indicate which part of Kobayashi the
Examiner relies upon. Id. Appellant argues that the rejection is therefore
improper for failing to state “the relevant teachings of the prior art relied
upon.” Id. (citing MPEP § 706.02(j)).
The Examiner explains in the Answer, however, that Kobayashi “is
cited as a cumulative reference.” Ans. 11. Appellant does not substantively
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challenge the Examiner’s reliance on Kobayashi as a cumulative reference.
Therefore, because we are unpersuaded of reversible error in the Examiner’s
rejection of claim 10 for the reasons discussed above, Appellant’s position
as to the rejection of claims 13–15 is also unpersuasive of reversible error.
Rejection VII: Claim 18 under 35 U.S.C. § 103(a) as Unpatentable over
Dube in view of Gal, Kobayashi, Gal 831, and Gal 733
Appellant argues that the Examiner’s rejection of claim 18 is improper
because the Examiner does not state the relevant teachings of the prior art
relied upon, based on the Examiner statement in the Final Action that
“Dube/Gal/Kobayashi/Gal ‘831 do not explicitly teach the cooling system
and the ammonia removal system are arranged in liquid connection.” Br. 23
(citing Final Act. 17 and MPEP § 706.02(j)).
Appellant’s argument, however, does not take into consideration the
entirety of the Examiner’s rejection of claim 18 as set forth in the Final
Action. Specifically, the Examiner finds that Gal 733 discloses using direct
contact cooler 50 to cool flue gas with cooling water before removing CO2
from the gas in absorber 22. Final Act. 18 (citing Gal 733 ¶ 48, and Figs. 1
and 3). The Examiner finds that Gal 733 discloses using the cooling water
following its exit from the direct contact cooler to remove ammonia from the
flue gas. Final Act. 18 (citing Gal 733 ¶ 52). In view of these disclosures in
Gal 733, the Examiner concludes that it would have been obvious to one of
ordinary skill in the art at the time of Appellant’s invention to arrange
Dube’s cooling system (as modified by Gal) and ammonia removal system
(as suggested by Gal 831) in liquid connection to allow the water from the
direct contact cooler to be used in the ammonia removal system. Final
Act. 18.
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Because Appellant does not substantively challenge the Examiner’s
factual findings and conclusion of obviousness for claim 18 (Br. 23),
Appellant’s arguments are unpersuasive of reversible error in the Examiner’s
rejection of this claim under 35 U.S.C. § 103(a), which we accordingly
sustain.
CONCLUSION

Claims
Rejected
Basis  Affirmed Reversed
1, 3, 10, and 17 § 103(a)
Dube and Gal 
1, 3, 10, and 17
2 § 103(a)
Dube, Gal, and Gal
831 
2
4 § 103(a)
Dube and Gal as
evidenced by Bates
4
7–9 § 103(a)
Dube, Gal, and
Emmer
7–9
11 § 103(a)
Dube, Gal,
Kobayashi, and Gal
831
11
13–15 § 103(a)
Dube, Gal,
Kobayashi, and
Emmer
13–15
18 § 103(a)
Dube, Gal,
Kobayashi, Gal 831,
and Gal 733
18
Overall Outcome 1–4, 7–11, 13–15,
17, and 18

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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