BASF SE

Patent Trials and Appeals Board

Nov 19, 2021

2021004565 (P.T.A.B. Nov. 19, 2021)

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.
16/556,903 08/30/2019 Gerald VORBERG 003084US 8738
151167 7590 11/19/2021
Gruneberg and Myers PLLC
1775 Tysons Blvd
5th Floor
Tysons, VA 22102
EXAMINER
BERNS, DANIEL J
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
11/19/2021 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):
em@gandmpatent.com
kg@gandmpatent.com
patent@gandmpatent.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte GERALD VORBERG, RALF NOTZ, THOMAS INGRAM,
GEORG SIEDER, and TORSTEN KATZ
Appeal 2021-004565
Application 16/556,903
Technology Center 1700
Before JEFFREY T. SMITH, MICHAEL P. COLAIANNI, and
JENNIFER R. GUPTA, Administrative Patent Judges.
GUPTA, Administrative Patent Judge.
DECISION ON APPEAL1
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 1–4.3 We have jurisdiction under

1 In this Decision, we refer to the Specification filed August 30, 2019
(“Spec.”); the Final Office Action dated October 22, 2020 (“Final Act.”); the
Appeal Brief filed March 22, 2021 (“Appeal Br.”); the Examiner’s Answer
dated June 2, 2021 (“Ans.”); and the Reply Brief filed July 19, 2021 (“Reply
Br.”).
2 “Appellant” refers to “applicant” as defined in 37 C.F.R. § 1.42. Appellant
identifies the real party in interest as BASF SE. Appeal Br. 1.
3 Claims 5–12 have been withdrawn from consideration by the Examiner.
Appeal 2021-004565
Application 16/556,903

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35 U.S.C. § 6(b). A telephonic hearing was held on November 2, 2021.4 We
REVERSE.
CLAIMED SUBJECT MATTER
The claims are directed to absorbent for selective removal of
hydrogen sulfide from a fluid stream. Spec. 1, l. 2. Claim 1, reproduced
below with emphasis to highlight a key disputed limitation, is illustrative of
the claimed subject matter:
1. A process for the selective removal of hydrogen
sulfide over carbon dioxide from a fluid stream, said process
comprising:
contacting the fluid stream which is selected from gases
and which has a total pressure of at least 3.0 bar, with an
absorbent, comprising an aqueous solution comprising:
a) a tertiary amine;
b) a sterically hindered secondary amine of the general
formula (I)

in which R1 and R2 are each independently selected from
C1-4-alkyl and C1-4-hydroxyalkyl; R3, R4, R5 and R6 are each
independently selected from hydrogen, C1-4-alkyl and C1-4-
hydroxyalkyl, with the proviso that at least one R4 and/or R5
radical on the carbon atom bonded directly to the nitrogen atom
is C1-4-alkyl or C1-4-hydroxyalkyl when R3 is hydrogen; x and y
are integers from 2 to 4 and z is an integer from 1 to 4; where the
molar ratio of b) to a) is in the range from 0.3 to 0.7, and

4 The record will include a transcript of the hearing when it becomes
available.
Appeal 2021-004565
Application 16/556,903

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c) an acid in an amount, calculated as neutralization
equivalent relative to the protonatable nitrogen atoms in a) and
b), of 1.0 to 9.0%;
wherein the absorbent does not comprise a sterically
unhindered primary or secondary amine,
there is a partial hydrogen sulfide pressure of at least 0.1
bar and/or a partial carbon dioxide pressure of at least 0.2 bar in
the fluid stream; and wherein the selectivity for hydrogen sulfide
over carbon dioxide is less than 1.6.
Appeal Br. 9 (Claims App.).
REJECTION
On appeal, the Examiner maintains the rejection of claims 1–4 under
35 U.S.C. § 103 over Vorberg5 and Attari.6 Final Act. 5; Ans. 3–4.
DISCUSSION
The dispositive issue on appeal is:
Has the Examiner reversibly erred in concluding that it would have
been obvious, based on Vorberg’s teaching of concentration ranges/values of
its amine and activator, to use (a) a tertiary amine and (b) a sterically
hindered secondary amine of the general formula (I) in a molar ratio of b) to
a) ranging from 0.3 to 0.7 in its aqueous solution? We answer this question
in the affirmative.
The Examiner finds Vorberg teaches an absorption medium for
removing acid gases from a fluid stream comprising an aqueous solution that
may include at least one amine—only a tertiary amine, for example 2-(2-

5 Vorberg et al., US 2010/0288125 A1, published Nov. 18, 2010.
6 Amir Attari and Sherman Chao, Sampling and Analysis of Natural Gas
Trace Constituents, Presentation at The First International Oil, Gas &
Petrochemical Congress (Sept. 1993).
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tert-butylaminoethoxy) ethanol (EETB), or a sterically hindered amine, for
example, methyldiethanolamine (MDEA). Final Act. 5; Vorberg ¶¶ 20, 23–
26. Citing In re Kerkhoven, 626 F.2d 846 (CCPA 1980), the Examiner
determines that it would have been obvious to use EETB, which corresponds
to claim 1’s sterically hindered secondary amine of general formula (I), and
a tertiary amine, such as MDEA, as amines in Vorberg’s aqueous solution.
Kerkhoven, 626 F.2d at 850 (discussing that it has been held prima facie
obvious to combine two compositions, each useful for the same purpose, to
form a third composition also useful for the same purpose).
For claim 1’s molar ratio, the Examiner finds that Vorberg teaches its
aqueous absorbent solution comprises 2 to 5 kmol/m3, and in particular 3.5
to 4.5 kmol/m3 of amine. Final Act. 6 (citing Vorberg ¶ 33). Citing In re
Aller, 220 F.2d 454, 456 (CCPA 1955), the Examiner determines that it
would have been obvious to employ a molar ratio of a sterically hindered
secondary amine to tertiary amine, such as EETB to MDEA, in a range from
0.3 to 0.7, using routine experimentation. Final Act. 7.
Appellant argues there is no evidence to support the Examiner’s
assertion that the claimed molar ratio is taught or rendered obvious by
Vorberg. Reply Br. 3; Appeal Br. 5.
Appellant’s argument identifies reversible error in the Examiner’s
rejection. Although Vorberg teaches an amount of amine in its aqueous
absorbent solution, because Vorberg fails to differentiate between the
amount of any amine, much less the sterically hindered secondary amine of
formula (I) (claim 1’s (b)), and a tertiary amine (claim 1’s (a)), Vorberg fails
to teach or suggest the claimed molar ratio. Reply Br. 3. Vorberg also fails
teach or suggest that changing the molar ratio of b) to a) would result in
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Application 16/556,903

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some type of improvement (id.), i.e., the parameters optimized were not
recognized to be result-effective variables. In re Antonie, 559 F.2d 618, 620
(CCPA 1977) (explaining that a particular parameter must first be
recognized as a result effective variable, i.e., a variable which achieves a
recognized result, before the determination of the optimum or workable
ranges of said variable might be characterized as routine experimentation).
Without such teaching, there is no direction regarding optimizing the molar
ratio of a sterically hindered secondary amine to tertiary amine, such as
EETB to MDEA, in Vorberg’s absorption medium. Accordingly, we do not
sustain the Examiner’s rejection of claims 1–4.
CONCLUSION
The Examiner’s decision to reject claims 1–4 is reversed.
DECISION SUMMARY
In summary:
Claims
Rejected
35 U.S.C.
§
References/Basis Affirmed Reversed
1–4 103 Vorberg, Attari 1–4

REVERSED