Ex Parte Asprion et al

Board of Patent Appeals and Interferences

Nov 19, 2009

10505721 (B.P.A.I. Nov. 19, 2009)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte NORBERT ASPRION
and CHIRSTOPH GROSSMANN
____________

Appeal 2009-0029781
Application 10/505,721
Technology Center 1700
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Decided: November 19, 2009
____________

Before JEFFREY T. SMITH, BEVERLY A. FRANKLIN, and,
KAREN M. HASTINGS, Administrative Patent Judges.

FRANKLIN, Administrative Patent Judge.

DECISION ON APPEAL

Appellants appeal under 35 U.S.C. § 134 from the Examiner's
rejection of claims 1-19. We have jurisdiction under 35 U.S.C. § 6.

1 This appeal was heard on November 3, 2009.
Appeal 2009-002978
Application 10/505,721

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STATEMENT OF THE CASE
Claim 1 is representative of the subject matter on appeal and is set
forth below:
1. A process for deacidifying a fluid stream comprising an acid gas as
an impurity, the process comprising

intimately contacting the fluid stream with a scrubbing liquid,

separating a fluid stream substantially free of the acid gas from a
scrubbing liquid laden with acid gas,

wherein the scrubbing liquid is an aqueous solution comprising

a) tertiary aliphatic alkanolamine wherein at least 30% by weight of
the tertiary aliphatic alkanolamine is 3-dimethylamino-1-propanol and

b) secondary aliphatic amine wherein at least 20% by weight of the
secondary aliphatic amine is piperazine,

and said contacting is performed at a total pressure of 2 bar or higher.

The prior art relied upon by the Examiner in rejecting the claims on
appeal is:
Sartori 4,240,922 Dec. 23, 1980
Suzuki 5,618,506 Apr. 8, 1997
McCabe et al., Unit Operations of Chemical Engineering, "Mass Transfer
and Its Application," 6th Ed., Chapter 18, Section IV, page 566.

THE REJECTION(S)
1. Claims 1-8, 12, 14-15, and 18-19 stand rejected under 35 U.S.C.
§ 103(a) as being obvious over Suzuki.2

2 The Examiner also discusses McCabe in support of this rejection. Ans. 4.
Appeal 2009-002978
Application 10/505,721

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2. Claims 9-11, 13, and 16-17 stand rejected under 35 U.S.C. § 103(a) as
being obvious over Suzuki in view of Sartori.
ISSUE
Have Appellants shown reversible error in the Examiner’s
determination that Appellants’ evidence of unobviousness is unconvincing?
We answer this in the negative.

FINDINGS OF FACT
In the instant case, the Specification and both Declarations do not
show the existence of unexpected properties in the range claimed (e.g., total
of 2 bar pressure or higher and claimed amounts of tertiary and secondary
amines).
PRINCIPLES OF LAW
Whether the unexpected results are the result of unexpectedly
improved results or a property not taught by the prior art, the “objective
evidence of nonobviousness must be commensurate in scope with the claims
which the evidence is offered to support.” In other words, the showing of
unexpected results must be reviewed to see if the results occur over the
entire claimed range. In re Clemens, 622 F.2d 1029, 1036 (CCPA 1980).
See also In re Peterson, 315 F.3d 1325, 1329-31 (Fed. Cir. 2003); In re
Grasselli, 713 F.2d 731, 741 (Fed. Cir. 1983). A prima facie case of
obviousness can be rebutted if the applicant can establish the existence of
unexpected properties in the ranged claimed. In re Geisler, 116 F.3d 1465,
1469 (Fed. Cir. 1997).
Appeal 2009-002978
Application 10/505,721

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ANALYSIS
As an initial matter, we group the claims based upon Appellants’
argument, and therefore consider claim 1. Appellants argue the limitations
of independent claim 1. 37 C.F.R. § 41.37(c)(1)(vii).
Appellants argue that Suzuki does not recognize the property of
improved scrubbing capacity exhibited by the use of the specific
combination of 3-dimethylaminopropanol and piperazine making up the
scrubbing liquid in a method for deacidicfying a fluid stream. Br. 4.
Appellants refer to pages 9-13 of their Specification, including Table 1
found on page 13 of the Specification, and two Declarations (the
Declarations by Dr. Asprion (dated March 20, 2003 and August 29, 2007))
in an effort to show the unobviousness in using such a scrubbing liquid in a
process for deacidfying a fluid stream. Br. 4; Reply Br. 4.
With regard to Appellants’ Specification, Appellants’ refer to pages
9-13. Br. 4. Appellants also discuss Table 1 found on page 13 of their
Specification. Br. 4. Upon review of these parts of Appellants’
Specification, we first note that a prima facie case of obviousness can be
rebutted if the applicant can establish the existence of unexpected properties
in the ranged claimed. In re Geisler, 116 F.3d at 1469; In re Clemens,
622 F.2d at 1036; In re Peterson, 315 F.3d at 1329-31; In re Grasselli,
713 F.2d at 741.
We agree with the Examiner (Ans. 7-8), that the Specification does
not show the existence of unexpected properties in the range claimed (e.g.,
total of 2 bar or higher and amounts of tertiary and secondary amines). The
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Application 10/505,721

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data in the Specification is not reflective of the scope of the claims, for
example, regarding the claimed amounts of both tertiary amine and
secondary amine or claimed pressure. For example, we cannot ascertain that
Figure 2 shows the criticality of a pressure of 2 bar or higher.
With regard to the Declaration by Dr. Asprion, dated March 20, 2003,
Appellants submit that this Declaration indicates that CO2 and H2S are more
soluble in the scrubbing liquid according to their invention at high pressure.
Br. 5. However, Appellants have not established that this Declaration
evinces the existence of unexpected properties in the ranged claimed (e.g.,
total pressure, amounts of tertiary and secondary amines claimed).
With regard to the second Declaration by Dr. Aspiron, dated August
29, 2007, Appellants state that the data indicates that “it would not be
predicted by one skilled in the art that the loading of 2-amino-2methyl-
propanol would be greater than monoethanolamine at higher pressure while
less at low pressure.” However, this data does not establish the existence of
unexpected properties in the ranged claimed. For example, the total
pressures shown in Table 1 on page 2 of this Declaration are 1 bar and 10
bar. This is not commensurate with Appellants’ claimed invention of a total
pressure of 2 bar or higher. That is, it is not shown that the results occur
over the entire claimed range. Id.
CONCLUSIONS OF LAW
Appellants have not shown reversible error in the Examiner’s
determination that Appellants’ evidence of unobviousness is unconvincing.

Appeal 2009-002978
Application 10/505,721

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DECISION
We affirm each of the rejections.
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)(v).
AFFIRMED

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