Ex Parte Heldebrant et al

Patent Trial and Appeal Board

Dec 18, 2014

12427851 (P.T.A.B. Dec. 18, 2014)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
12/427,851 0412212009
29171 7590 12/22/2014
BATTELLE MEMORIAL INSTITUTE
ATTN: IP LEGAL SERVICES, Kl-53
P.O. BOX999
RICHLAND, WA 99352
FIRST NAMED INVENTOR
David J. Heldebrant
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
15845-E B CIP 7746
EXAMINER
SAHA, BIJAY S
ART UNIT PAPER NUMBER
1732
NOTIFICATION DATE DELIVERY MODE
12/22/2014 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):
ipdocket@pnl.gov
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte DAVID J. HELDEBRANT, CLEMENT R.
YONKER, and PHILLIP K. KOECH
Appeal2012-008725
Application 12/427,851
Technology Center 1700
Before CHUNG K. PAK, CATHERINE Q. TIMM, and
JAMES C. HOUSEL, Administrative Patent Judges.
TIMM, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF CASE
Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision to reject claims 1 and 2 under 35 U.S.C. § 102(b) as anticipated by
Jessop 1 and claims 8, 10, 11, and 14--22 under 35 U.S.C. § 103(a) as obvious
over Jessop in view ofDavis.2 We have jurisdiction under 35 U.S.C. § 6(b).
1 US 2008/0058549 Al published Mar. 6, 2008.
2 US 2010/0150804 Al published Jun. 17, 2010.
Appeal2012-008725
Application 12/427,851
We AFFIRM-IN-PART.
According to the title of Appellants' Specification, Appellants'
invention is directed to the capture and release of acid-gasses with acid-gas
binding organic compounds. The acid-gas binding organic compounds
(BO Ls) are useful for scrubbing acid-gases from flue gas to prevent the
release of the acid gases into the atmosphere. Spec. i-fi-13 and 6. Upon mild
heating, the BOL compounds reversibly release the acid gas and regenerate
the underlying binding organic bases. Spec. i1 7.
Appellants' Specification describes a genus of acid-gas binding
organic compounds (BOLs) including S02 binding organic liquids
(S02BOLs ), COS binding organic liquids (COS BO Ls), CS2 binding organic
liquids (CS2BOLs), hydrogen sulfide binding organic liquids (H2SBOLs),
and nitrogen dioxide binding organic liquids (N02BOLs ). Spec. i1 7.
Appellants' claims relate to the compositions, systems, and methods
employing compounds that bind to non-carbon containing acid gases, e.g.,
the S02BOLs, H2SBOLs, and N02BOLs, and a reversible zwitterionic
liquid.
The independent claims are reproduced below:
1. A non-aqueous acid gas capture system characterized by:
at least one binding organic liquid (BOL) that forms a
reversible zwitterionic liquid when contacted with a non-carbon
containing acid gas.
Claims Appendix at Appeal Br. 13.
8. A method characterized by the step of:
treating a gas stream containing a non-carbon containing
acid-gas with a non-aqueous binding organic liquid to form a
reversible zwitterionic liquid.
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Application 12/427,851
Claims Appendix at Appeal Br. 13-14.
19. A closed system gas scrubber characterized by the
presence of at least one chemically binding organic liquid
material selected from the group consisting of S02BOLs, and
N02BOLs.
Claims Appendix at Appeal Br. 15.
20. A reversible solvent for chemical reactions,
separations, and/or phase-transfer catalysis characterized by
the presence of a chemically binding organic liquid selected
from the group consisting of S02BOLs and N02BOLs.
Claims Appendix at Appeal Br. 15.
21. A composition comprising:
a chemically binding organic liquid that forms a
reversible zwitterionic liquid when contacted with S02 or N02 .
Claims Appendix at Appeal Br. 15-16.
22. A reversible zwitterionic liquid having the structure
wherein R 1 is selected from the group consisting of
alkyl, aryl, silyl, ether, and ester,
R2 is selected from the group consisting of alkyl, aryl,
silyl, ether, and ester,
Xl is selected from the group S, and O;
X2 is selected from the group S and N;
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Application 12/427,851
n is between 1 and 20 carbon links or an organic linker,
and
Y is any structure that can connect with R 1, R2 and H as
shown.
Claims Appendix at Appeal Br. 16 (formatting added).
OPINION
Anticipation
The Examiner rejects claims 1-2 under 35 U.S.C. §102(b) as
anticipated by Jessop. Appellants do not argue claim 2 separately. For the
anticipation rejection, we select claim 1 as representative.
Issue: Have Appellants identified a reversible error in the Examiner's
finding that Jessop describes, within the meaning of 35 U.S.C. § 102,
compounds within the genus of compounds required by claim 1?
We answer this question in the negative and, thus, affirm the decision
of the Examiner to reject claims 1 and 2 as anticipated by Jessop.
Jessop teaches a switchable solvent formed from, for instance,
amidine and alcohol, guanidine and alcohol, or from primary amine,
secondary amine or tertiary amine. Jessop i-f 56. Jessop discloses that these
solvents switch between a neutral form and a charged zwitterionic form in
response to a selected trigger. Jessop i-fi-18-9 and 125-127. There is no
dispute that Jessop does not disclose a non-carbon containing trigger; Jessop
discloses that the trigger may be C02, CS2 or COS, all carbon-containing
acid gases. Id. Appellants contend that Jessop does not teach reversible
binding of non-carbon containing acid gas species and thus the Examiner's
rejection of claims 1-2 as anticipated is incorrect. Appeal Br. 7.
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Application 12/427,851
To properly decide the issue, the first step is to determine what is
encompassed by claim 1. In re Wilder, 429 F.2d 447, 450 (CCPA 1970)
("the first inquiry must be into exactly what the claims define."). "During
examination, 'claims ... are to be given their broadest reasonable
interpretation consistent with the specification, and ... claim language
should be read in light of the specification as it would be interpreted by one
of ordinary skill in the art."' In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004) (quoting In re Bond, 910 F.2d 831, 833 (Fed.
Cir. 1990)).
Claim 1 is directed to "[a] non-aqueous acid gas capture system
characterized by at least one binding organic liquid (BOL) that forms a
reversible zwitterionic liquid when contacted with a non-carbon containing
acid gas." Claim 1 (emphasis added).
Appellants' Specification uses the word "system" in a structural sense
to refer to apparatus such as scrubbers, and compounds such as binding
organic liquids. Compare Spec. i-f 6 ("This application describes reversible
acid-gas binding organic liquid materials, systems and methods that permit
capture of one or more of the several acid gases."); Spec i-f 10 (referring to
"scrubbing systems"); Spec. i-f 24 (referring to "flue gas recovery systems")
with Spec. i-f 7 (using "system" to refer to the binding organic liquids
themselves, i.e., the C02BOLs, S02BOLs, CS2BOLs, COSBOLs, H2SBOLs,
and N02BOLs); see also Spec. i-fi-123 and 25.
Because the body of claim 1 only recites a limitation directed to
binding organic liquid (BOL), i.e., a compound, we interpret claim 1 as
directed to something structural in nature characterized by at least one
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Appeal2012-008725
Application 12/427,851
compound from a genus of chemical compounds (BO Ls meeting the further
limitation of the claim).
The next question is how the claim language "that forms a reversible
zwitterionic liquid when contacted with a non-carbon containing acid gas"
limits the structure recited in the claim. Because this phrase modifies "at
least one binding organic liquid (BOL)", a chemical compound, the phrase
can only serve to limit the scope of compounds within the BOL genus.
To further help clarify the scope of the claim and inform our
comparison of the claimed compounds with those of the prior art, we ask:
Which of the compounds recited in the Specification are encompassed by the
BOL genus of claim 1?
The Specification describes a genus of binding organic liquids (BOLs)
including S02 binding organic liquids (S02BOLs), COS binding organic
liquids (COSBOLs), CS2 binding organic liquids (CS2BOLs), hydrogen
sulfide binding organic liquids (H2SBOLs ), and nitrogen dioxide binding
organic liquids (N02BOLs ). Some of these BO Ls contain carbon. The
claim language "that forms a reversible zwitterionic liquid when contacted
with a non-carbon containing gas" in claim 1 serves to limit the genus of
claim 1 to only those compounds that are capable of forming a reversible
zwitterionic liquid when contacted as claimed. The Specification describes
the entire genus of BOL compounds, i.e., the carbon-containing and non-
carbon containing BOLs as
comprised of a strong organic base (preferably, but not limited
to, amidines or guanidines) and a weak acid (preferably, but not
limited to alcohols). The alcohol, base and acid gas chemically
react together to form hetero-atom analogues. Each of these
systems when combined with a target acid gas form hetero-
atom analogues of alkyl carbonates that reversibly release the
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Application 12/427,851
respective acid gas with mild heating and regenerate the
underlying binding organic bases. In some embodiments these
are single molecules of zwitter[i]onic liquids.
Spec. i-f 7. The Specification provides five equations in paragraph 18 that
merely describe a base that reacts with an alcohol and the gas to form a salt.
Spec. i-f 18. There are specific examples in Figures 1 and 2 using bases
amidine and guanidine that are not limited to forming salts with any
particular acid gas. Figs. 1 and 2. And although the Specification discloses
using simple bases such as triethylamine or ethyldiisopropylamine to capture
stronger acid gases such as S02, and other amines of a particular formula,
including the tertiary amine N,N-dibutylundecanolamine (DBUA) with
alcohol to bind S02, the rest of the Specification indicates that other bases
will work. Compare Spec. i-fi-120 and 25-26; Figs. 3, 5, and 6 with Spec. in
its entirety. In particular, when discussing S02BOLs, the Specification
states that "any base (R3N, R3P) can substitute for the amine." Spec. i-f 26.
R3N bases are tertiary amines.
Jessop describes switchable solvents composed of, among others, a
base such as amidine and alcohol, guanidine and alcohol, and single
compound amine systems of primary, secondary, or tertiary amines. Jessop
i-f 56. Jessop does not disclose that the solvents form a reversible
zwitterionic liquid when contained with non-carbon containing acid gas.
Rather, Jessop mentions forming the zwitterionic liquid when contacted with
carbon-containing acid gases C02, CS2 or COS. Jessop i-fi-19 and 125. When
discussing the tertiary amines, Jessop also discloses that they are "not suited
to reversibility as they lack an N-H bond into which C02 can be inserted."
Jessop states that primary amines are well suited to serve as switchable
solvents at higher temperatures and secondary amines are particularly
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Application 12/427,851
preferred. Jessop if 127. Jessop describes the secondary amine N-butyl-N-
ethylamine (NHEtBu) as reversibly switchable. Jessop if 128.
A preponderance of the evidence supports the Examiner's finding that
Jessop teaches compounds that, should they be contacted with non-carbon
containing acid gas, will function as claimed. This is because the bases of
Jessop are similar to those described by Appellants as able to form a
reversible zwitterionic liquid when contacted by non-carbon acid gases such
as S02, H2S, and N02 as well as carbon containing acid gases. The broad
nature of what compounds described by Appellants in their Specification are
within the genus of BO Ls that form the recited reversible zwitterionic liquid
when contacted with a non-carbon containing acid gas further supports the
Examiner's finding. 3
The Examiner's reasonable finding that the compounds of Jessop are
capable of functioning as claimed shifts the burden to Appellants to prove
that the subject matter shown to be in the prior art does not possess the
characteristic relied on. In re Schreiber, 128 F.3d 1473, 1478 (Fed. Cir.
1997). Appellants contend that Jessop's system is unsuitable for and would
not function with non-carbon containing acid gases. Appeal Br. 8. The
question is whether Appellants have met their burden in showing that their
compounds are patentably different in structure or Jessop's compounds are
incapable of providing the function recited in the claims.
Although Appellants made some statements in their briefs and
submitted some slides during an interview with the Examiner indicating that
3 Upon return of the case to the jurisdiction of the Examiner, the Examiner
should consider whether the bounds of the genus of compounds
encompassed by claim 1 is clear enough to meet the requirements of 3 5
U.S.C. § 112 if 2.
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Application 12/427,851
some of Jessop's compounds might not bind reversibly, this evidence is not
in the form of a properly executed affidavit or declaration. These statements
are tantamount to attorney arguments and we give them little weight. It is
well settled that unsworn exhibits are treated as arguments. In re Mehta, 347
F.2d 859, 866 (CCPA 1965). Attorney argument in the briefs cannot take
the place of evidence. In re Pearson, 494 F.2d 1399, 1405 (CCPA 1974).
Moreover, given the breath of Appellants' own Specification regarding the
breath of the bases that can be used, the statements in the slides and briefs
are not convincing, for they seem to conflict with the statements in
Appellants' own Specification.
Appellants and the Examiner discuss "a Heldebrant paper" that was
published after the filing date of the present application. Compare Appeal
Br. 8 with Ans. 11. Although the paper cannot serve as prior art, it provides
some evidence of what compounds are inherently capable of functioning as
claimed. The paper provides some evidence that neither DBU/1-hexanol nor
TMB/1-hexanol release chemically bound S02 at temperatures up to 150°C,
but less basic simple amines such as Hiinig's base "are more practical
choices." Heldebrant et al., Chem. Eur. J. 2009, 15, 7619, 7627. DBU is an
amidine and TMG is a guanidine. However, the fact that Hiinig's base may
be more practical does not provide evidence that the DBU and TMG systems
are not capable of functioning. The claim does not require that forming the
reversible zwitterionic liquid occur at temperatures below 150°C.
Moreover, Jessop teaches simple bases (primary, secondary, and tertiary
amines). Heldebrant does not convince us that Jessop fails to teach
compounds capable of functioning as claimed.
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Application 12/427,851
Appellants refer to their Figure 5 in arguing that their invention
teaches "this feature," which seems to be referring to teaching reversibly
capturing S02, as opposed to Jessop which does not teach reversibly
capturing S02. But Appellants state that Jessop teaches irreversibly binding
S02 with DBU + alcohol. Appellants point to no portion of Jessop in
support of that statement, and we find none. Jessop states that C02 in
general does not reversibly bind with tertiary amines and describes the
reaction ofDBU +alcohol with C02. Jessop i-fi-159, 108, 127, and 136; Fig.
1. DBU is an amidine, not a tertiary amine, and the DBU + alcohol system
is described as a switchable solvent system with respect to C02. Jessop i-f
136; Example 1 at i-fi-f 188-202; Fig. 1. Jessop is silent with respect to the
effect of S02 on the compounds. Appellants' Figure 5 and the associated
text of the Specification provides evidence that a different compound,
DBUA (N, N-dibutylundecanolamine), is a S02BOL that reversibly captures
S02. Fig. 5; Spec. i-fi-125-26. None of these teachings provide convincing
evidence that Jessops' compounds would not form reversible zwitterionic
liquid when contacted with a non-carbon containing acid gas.
Weighing all the evidence, we determine that a preponderance of the
evidence supports the Examiner's finding of anticipation.
Obviousness
The Examiner rejects claims 8, 10, 11, and 14--22 under 35 U.S.C. §
103(a) as obvious over Jessop in view of Davis. Appellants do not clearly
argue any of the claims separately. However, Appellants' arguments
implicitly raise different issues for different groups of claims. Therefore, we
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Application 12/427,851
group claims according to the issues arising. Claims not discussed
separately stand or fall with the claims from which they depend.
Claims 19-21
Claims 19-21, like claim 1, are directed to structures containing at
least one chemical compound. The S02BOLs and N02BOLs are tailored to
capture and release the respective S02 or N02 acid gas; they are not already
bound to the gas. Spec. i-f 24. It is the compounds capable ofbeing so
contacted to form reversible zwitterionic liquid that are claimed. As we
explained above, Jessop describes compounds that would form reversible
zwitterionic liquid when contacted with S02 or N02 . There is no convincing
evidence that Jessop fails to teach compounds capable of functioning as
claimed. 4
Appellants have not convinced us that the Examiner reversibly erred
in rejecting claims 19-21.
Claim 8
Appellants contend that Davis does not teach reversible chemical
binding of a non-carbon containing gas. Appeal Br. 9-11. This argument is
only germane to claim 8, the method claim that requires a step of "treating a
gas stream containing a non-carbon containing acid-gas with a non-aqueous
binding organic liquid to form a reversible zwitterionic liquid."
Appellants' argument focuses on the wrong aspects of Davis. Davis
indicates that reversible capture of C02 was known in the art, and discloses
ionic liquids as "[ o ]ne of the most promising new categories of materials for
use in C02 removal." Davis i-fi-13--4. Although Davis' specific invention is
4 As with claim 1, the genus of compounds encompassed by claims 19-21 is
not particularly clear from a reading of Appellants' Specification. The
Examiner should consider a rejection under 35 U.S.C. § 112 i-f 2.
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Application 12/427,851
concerned with what is called in the reference new amine-functionalized
task-specific ionic liquids (TSILs) for C02, Davis states that the TSILs can
be used to capture C02, S02, CS2, and N02. This provides evidence that the
binding organic liquids known in the art would have been viewed as useful
not only with C02, but with similar acid gases such as S02 and N02. Jessop
describes a known binding organic liquid. Thus, it follows that those of
ordinary skill in the art would have viewed the switchable solvents of Jessop
as useful for treating non-carbon containing acid gases such as S02 and N02.
Appellants contend that the combination of the teachings of Jessop
and Davis would not have lead one of ordinary skill in the art to the
invention, there is no reason to combine the teachings, and even if combined
there would have been no expectation that they would work together to
function as the present invention does. Appeal Br. 11. But the teaching of
C02, S02, CS2, and N02 in Davis as a genus of treatable gases suggests
otherwise.
Claim 22
Claim 22 is directed to a reversible zwitterionic liquid of the structure
set forth in the claim. 5
5 Appellants amended claim 22 to change "C" to "N" such that the recitation
"X2 is selected from the group S and C" is now "X2 is selected from the
group Sand N." Response to Examiner's Action filed November 21, 2011,
entered as per Advisory Action filed December 6, 2011. But Appellants did
not point where in the Specification this amendment derives written
descriptive support. Response to Examiner's Action filed November 21,
2011. Figure 6 states that "X2= S, C" and we find no other portion of the
Specification providing written descriptive support for Appellants'
amendment to claim 22. Should prosecution continue in the application, the
Examiner should consider rejecting claim 22 under 35 U.S.C. § 112, i-f 1.
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Application 12/427 ,851
The Examiner acknowledges that Jessop does not set forth that the
reversible binding organic liquid is in the form expressed in claim 22. Ans.
9. The Examiner points to formula 2 of Jessop, and acknowledges that
formula 2 contains R 1HN, NR4R5, and NR2R3 groups instead of the claimed
Hand R 1 and R2 groups of claim 22.
The formula 2 structure is:
The Examiner finds that Davis teaches a binding organic liquid in
Figure 1 and reproduces the anionic counter ion depicted in Figure 1 that
occurs after contact with the acid gas, which is as follows:
The Examiner states that Davis establishes that functional groups
(amine, alkyl and aryls) can be used as functional equivalents. Ans. 8.
The claimed structure is as follows:
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The issue is: Have Appellants identified a reversible error in the
Examiner's finding that Jessop in view of Davis teaches or suggests a
compound having a structure meeting the claimed structure?
As pointed out by Appellants, the structure of Davis is different than
the structure of claim 22 in terms of the oxygen configuration around the
sulfur. The Examiner contends that the claimed oxygen configuration would
result when the ordinary artisan contacted Jessop's liquid with S02, but the
evidence relied upon by the Examiner to reject claim 22 does not support
such a finding.
CONCLUSION
We sustain the rejection of claims 1-2 under 35 U.S.C. §102(b) as
anticipated by Jessop and the rejection of claims 8, 10, 11, and 14--21 under
35 U.S.C. § 103(a) as obvious over Jessop in view of Davis, but we do not
sustain the Examiner's rejection of claim 22 under 35 U.S.C. § 103(a) as
obvious.
DECISION
The Examiner's decision is affirmed-in-part.
TIME PERIOD FOR RESPONSE
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l).
AFFIRMED-IN-PART
kmm
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