Ex Parte Anand et alDownload PDFBoard of Patent Appeals and InterferencesApr 16, 201212076386 (B.P.A.I. Apr. 16, 2012) Copy Citation UNITED STATES PATENT AND TRADEMARK OFFICE _________________ BEFORE THE BOARD OF PATENT APPEALS AND INTERFERENCES _________________ Ex parte ASHOK KUMAR ANAND, CHETAN MADHAV JOSHI, and JEGADEESAN MARUTHAMUTHU _________________ Appeal 2011-006974 Application 12/076,386 Technology Center 1700 _________________ Before BRADLEY R. GARRIS, KAREN M. HASTINGS, and DEBORAH KATZ, Administrative Patent Judges. KATZ, Administrative Patent Judge. DECISION ON APPEAL Appeal 2011-006974 Application 12/076,386 2 Appellants1 seek our review, under 35 U.S.C. § 134(a), of the Examiner’s decision to reject claims 1-20. (App. Br. 5.) We have jurisdiction under 35 U.S.C. § 6(b). A hearing was held on April 10, 2012. We affirm in part. Appellants present two sets of claims on appeal: claims directed to systems involving CO2 capture (independent claim 1 and claims 2-11, which depend on claim 1) and claims directed to methods of recovering CO2 (independent claim 12 and claims 13-20, which depend on claim 12). (See App. Br. 19-22, Claims App’x.) The Examiner rejected system claims 1-2, 5, 9, and 112 under 35 U.S.C. § 102(b) over Jahnke3. (Ans. 3.) The Examiner also rejected system claims 3-4 under 35 U.S.C. § 103(a) over Jahnke and Hegarty4 (Ans. 6) and system claims 6-8 and 10 under 35 U.S.C. § 103(a) over Jahnke and Adler5 (Ans. 8). 1 The real party in interest is said to be General Electric Company. (App. Br. 3.) 2 Appellants list claims 1-2, 5, 9, 11-14, 18, and 20 as being rejected under 35 U.S.C. § 102(b) over Jahnke (App. Br. 10), but note that this may have been a typographical error by the Examiner (see id. at 11). Although the Examiner listed these claims as being rejected under 35 U.S.C. § 102(b) in the final Office Action mailed July 21, 2010 (p. 2), only claims 1-2, 5, 9, and 11 were discussed in that Office Action and only those claims were listed in the Examiner’s Answer (p. 3). Accordingly, we consider only claims 1-2, 5, 9, and 11 as being rejected under 35 U.S.C. § 102(b) over Jahnke. 3 Jahnke and Volk, U.S. Patent 6,090,356, issued July 18, 2000. 4 Hegarty, U.S. Patent 4,957,515, issued September 18, 1990. 5 Alder et al., U.S. Patent 4,581,052, issued April 8, 1986. Appeal 2011-006974 Application 12/076,386 3 The Examiner rejected method claims 12-14 and 18-20 under 35 U.S.C. § 103(a) over Jahnke. (Ans. 5.) The Examiner also rejected method claims 15-16 under 35 U.S.C. § 103(a) over Jahnke and Hegarty (Ans. 6) and method claims 17 and 19 under 35 U.S.C. § 103(a) over Jahnke and Adler (Ans. 8). System Claims Appellants’ claim 1 recites: In a system involving CO2 capture having an acid gas removal system to selectively remove CO2 from shifted syngas, the acid gas removal system including: at least one stage for CO2 removal from an input stream consisting of substantially only dissolved carbon dioxide in physical solvent; a pump for elevating a pressure of said input stream of dissolved carbon dioxide in physical solvent to produce a pressurized stream upstream of said at least one CO2 removal stage; and a heat exchanger for elevating the temperature of the pressurized stream upstream of at least one said CO2 removal stage. (App. Br. 19, Claims App’x.) The Examiner found that the process taught in Jahnke includes a stage for CO2 removal from a stream, a pump for elevating pressure of the input solvent stream upstream of the CO2 removal stage, and a heat exchanger. (Ans. 3-4, ¶ 3; Jahnke, col. 6, ll. 51-56.) The Examiner found that the stream in Jahnke is not substantially dissolved carbon dioxide, but that the composition of the stream does not Appeal 2011-006974 Application 12/076,386 4 impart further structural limitations on the system as claimed. (Ans. 4, ¶ 4.) The Examiner also found that the structure of Jahnke is capable of performing the function of Appellants’ system, as claimed. (Id.) Appellants have not presented evidence to persuade us that the Examiner erred in finding that the Jahnke system is capable of performing the function of Appellants’ claimed system. Appellants argue that the system of Jahnke is described as being used for a different purpose (see App. Br. 11-14) and that it has a different input stream than the input stream recited in their claims (see id. at 14-15). Appellants do not provide the appeal record with any basis for interpreting claim 1 to include the content of the input stream as a structural limitation. Appellants’ system includes at least one stage for CO2 removal, a pump, and a heat exchanger. The system of Jahnke includes these elements and has not been shown to be incapable of removing CO2 from an input stream consisting of substantially only dissolved CO2 in physical solvent, as claimed. “It is well settled that the recitation of a new intended use for an old product does not make a claim to that old product patentable.” In re Schreiber, 128 F.3d 1473, 1477 (Fed. Cir. 1997). Accordingly, Jahnke anticipates Appellants’ claim 1 system. Claim 11 Appellants argued separately for the patentability of system of claim 11 (App. Br. 14), which provides that the “recovered CO2 is compressed downstream of at least one said CO2 removal stage in preparation for storage and sequestration” (App. Br. 20, Claims App’x). Appellants assert that Jahnke does not teach compression of recovered CO2 downstream of a CO2 removal stage. (App. Br. 14.) Appellants cite Jahnke at column 4, lines 52- Appeal 2011-006974 Application 12/076,386 5 55, as teaching that CO2 removed from the stream can be fed to a combustion turbine without compression (App. Br. 14), but the Examiner cites Jahnke elsewhere as teaching downstream compression of CO2 (Ans. 4, citing Jahnke, col. 8, ll. 59-61). Though Appellants argue that the portion of Jahnke cited by the Examiner does not teach compressing CO2 downstream of a removal stage, Jahnke discusses using compression to recover the “relatively small amounts of CO2 remaining in the solvent after stripping.” (Jahnke, col. 8, ll. 59-61.) As discussed above, the composition of the input stream does not impart a structural limitation on Appellants’ claimed systems. Thus, Jahnke teaches a compression within the scope of Appellants’ claim 11 and we sustain the Examiner’s rejection of claim 11. Rejections over Jahnke in view of Hegarty or in view of Adler Appellants do not put forth arguments against the rejections of claims 3 and 4 over Jahnke and Hegarty or of claims 6-8 and 10 over Jahnke and Adler that are different from the arguments put forth against the rejection of claim 1 over Jahnke alone. (See App. Br. 17.) For the reasons provided above, we sustain the Examiner’s rejections of these dependent system claims. Method Claims Appellants’ claim 12 recites: In a system involving CO2 capture having an acid gas removal system to selectively remove CO2 from shifted syngas, the acid gas removal system including at least one stage for CO2 removal from an input stream consisting of substantially only dissolved carbon dioxide in physical solvent, the method of recovering CO2 in the acid gas removal system including: Appeal 2011-006974 Application 12/076,386 6 elevating a pressure of said input stream of dissolved carbon dioxide in physical solvent to produce a pressurized stream upstream of said at least one CO2 removal stage; and elevating the temperature of the pressurized stream upstream of at least one said CO2 removal stage. (App. Br. 20-21, Claims App’x.) Acknowledging that Jahnke does not teach an input stream, as claimed, the Examiner found that those of skill in the art would have considered it “obvious to try any composition of CO2 in attempts to improve upon older processes.” (Ans. 5, ¶ 14.) We agree with Appellants that the Examiner has failed to provide a prior art teaching or a reason to modify the input stream. (See App. Br. 15- 16.) Accordingly, we do not sustain the Examiner’s rejection of Appellants’ method claims as being obvious over Jahnke. The Examiner does not make findings regarding Hegarty and Adler to cure the deficiencies of Jahnke in rendering obvious the method claims dependent on Appellants’ claim 12. Thus, we do not sustain the rejections of claims dependent on claim 12 either. Decision Upon consideration of the record and for the reasons given, we sustain the rejection of claims 1-2, 5, 9, and 11 under 35 U.S.C. § 102(b) over Jahnke; we sustain the rejection of claims 3-4 under 35 U.S.C. § 103(a) over Jahnke and Hegarty; Appeal 2011-006974 Application 12/076,386 7 we sustain the rejection of claims 6-8 and 10 under 35 U.S.C. § 103(a) over Jahnke and Adler; we do not sustain the rejection of claims 12-14 and 18-20 under 35 U.S.C. § 103(a) over Jahnke; we do not sustain the rejection of claims 15-16 under 35 U.S.C. § 103(a) over Jahnke and Hegarty; and we do not sustain the rejection of claims 17 and 19 under 35 U.S.C. § 103(a) over Jahnke and Adler. Therefore, we affirm in part the decision of the Examiner. No time period for taking any subsequent action in connection with this appeal may be extended under 37 C.F.R. § 1.136. AFFIRMED-IN-PART ssl Copy with citationCopy as parenthetical citation