Ex Parte Anand et al

Board of Patent Appeals and Interferences

Apr 16, 2012

12076386 (B.P.A.I. Apr. 16, 2012)

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