Ex Parte Jochem

Board of Patent Appeals and Interferences

Feb 9, 2004

08499442 (B.P.A.I. Feb. 9, 2004)

1Appellant’s amendment subsequent to the final rejection
dated Sept. 12, 2001, Paper No. 53, was refused entry by the
examiner (see the amendment dated May 1, 2002, Paper No. 58,
refused entry as per the Advisory Action dated May 16, 2002,
Paper No. 59).
The opinion in support of the decision being entered today was not written
for publication and is not binding precedent of the Board.
Paper No. 72
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte GERARD JOCHEM
____________
Appeal No. 2003-1529
Application No. 08/499,442
____________
HEARD: December 9, 2003
____________
Before GARRIS, WALTZ, and JEFFREY T. SMITH, Administrative Patent
Judges.
WALTZ, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on an appeal from the primary examiner’s
final rejection of claims 3 through 8, 17 and 20 through 26.1
The only other claims remaining in this application are claims 9
through 12, with the examiner indicating that claims 9 through 11
are allowed and claim 12 is objected to as depending on a rejected
Appeal No. 2003-1529
Application No. 08/499,442
2
base claim but would be allowable if rewritten in independent form
including all of the limitations of the base claim and any
intervening claims (final Office action dated Sept. 12, 2001, Paper
No. 53, page 6; Brief, page 2). We have jurisdiction pursuant to
35 U.S.C. § 134.
According to appellant, the invention is directed to a process
for drying a gaseous or liquid mixture with the aid of an adsorber
composed of alumina and of a molecular sieve (Brief, page 4).
Appellant states that claims 3, 7 and 23 stand or fall together
while each of the other claims on appeal stand on their own (Brief,
page 6). To the extent appellant has provided reasonably specific,
substantive reasons for the separate patentability of individual
claims, we consider these claims separately. See 37 CFR
§ 1.192(c)(7)(2000); In re McDaniel, 293 F.3d 1379, 1383, 63 USPQ2d
1462, 1465 (Fed. Cir. 2002). A copy of illustrative independent
claims 3 and 17 is attached as an Appendix to this decision.
The examiner has relied upon the following references as
support for the rejections on appeal:
Matyear, Jr. (Matyear) 2,910,139 Oct. 27, 1959
Bauer 3,691,251 Sept. 12, 1972
Appeal No. 2003-1529
Application No. 08/499,442
3
Claims 3-5, 7, 17 and 20-26 stand rejected under 35 U.S.C.
§ 102(b) as anticipated by Bauer (Answer, page 2). Claims 6 and 8
stand rejected under 35 U.S.C. § 103(a) as unpatentable over Bauer
(Answer, page 3). Claims 3-8, 17 and 20-26 stand rejected under
35 U.S.C. § 103(a) as unpatentable over Matyear (Answer, page 4).
We affirm all of the rejections on appeal essentially for the
reasons stated in the Answer and those reasons set forth below.
OPINION
A. The Rejection under § 102(b) over Bauer
The examiner finds that Bauer discloses a process for the
drying of a gas mixture by passing the gas mixture into an
adsorption zone which contains an upstream alumina adsorbent
and a downstream molecular sieve adsorbent (Answer, page 3). The
examiner recognizes that Bauer does not specifically disclose that
the ratio of the volume of alumina to the volume of the molecular
sieve and the alumina (Q) is between 0.05 and 0.8 at an instant
when water breaks through an exit of the adsorber (id.). The
examiner also recognizes that Bauer does not specifically disclose
that the adsorption zone comprises a mass transfer zone and an
equilibrium zone (id.). However, the examiner states that the
process of Bauer is the same or similar to the claimed process in
Appeal No. 2003-1529
Application No. 08/499,442
4
terms of the composition of the adsorption zone and the feedstock,
the adsorption zone of Bauer has an active alumina zone and a
molecular sieve zone which are operated the same as the claimed
adsorption zone, and estimates a ratio Q for Bauer of about 0.20
based on the entire column (id.). Therefore the examiner concludes
that the Bauer process inherently has a mass transfer zone and
equilibrium zone within the limits as claimed by appellants (id.;
see also the Answer, page 6).
Bauer discloses the drying of cracked gases such as a cracked
propane stream containing ethylene (col. 1, ll. 56-60). Appellant
discloses that the feedstock may be gases originating from steam
cracking or fluid catalytic cracking, or natural gases such as
methane or ethane “type” (specification, page 2, l. 25- page 3,
l. 3). Bauer teaches using a “minor bed” by replacing “two-three
feet of the usual molecular sieve desiccant with, say, activated
alumina,” thus protecting the expensive molecular sieve (col. 1,
ll. 45-49; col. 2, ll. 15-19; col. 3, l. 66-col. 4, l. 3), with the
alumina protecting the sieve material from fouling by polymers as
well as effectively removing water (col. 2, ll. 25-30; col. 4, ll.
4-9).
Appeal No. 2003-1529
Application No. 08/499,442
2Appellant defines the mass transfer zone and the
equilibrium zone at page 4, ll. 17-22, and page 5, ll. 15-22,
respectively, of the specification.
3See the Answer, page 3. Taking into account the
approximate volume of the support materials 6, 7 and 14, the
ratio only changes to approximately 0.21 (see col. 6, ll. 63-67).
5
Appellant teaches that it is essential that the alumina and
molecular sieve should be introduced “in precise conditions,” i.e.,
in the equilibrium zone of the adsorber the ratio of the volume
of alumina to that of the alumina and the molecular sieve (Q) is
generally between 0.05 and 0.8 (specification, page 3, l. 27-page
4, l.4; page 6, ll. 3-6 and 11-16).2 Appellant discloses the
running conditions of the adsorber as a surface velocity of the
gaseous mixture between 1 and 20 m/min, a pressure between 600 mm
Hg and 150 bars, and a temperature between -40 and 100 °C.
(specification, page 11).
Bauer teaches running conditions of the adsorber as a
temperature of about 50-60°F., a pressure of 202 psia, a flow rate
of over 8000 mols/hr, and an amount of water of 0.10 mole percent
(see Table 1 in col. 5 and col. 6, ll. 19-21). Bauer exemplifies
an adsorber vessel where the ratio of the volume of activated
alumina to the volume of alumina and molecular sieve at charging
is approximately 0.2 (col. 6, ll. 59-67).3
Appeal No. 2003-1529
Application No. 08/499,442
4In re Best, 562 F.2d 1252, 1255, 195 USPQ 430, 433 (CCPA
1977), quoting In re Swinehart, 439 F.2d 210, 212-13, 169 USPQ
226, 229 (CCPA 1971)
6
As stated by a predecessor of our reviewing court:
[I]t is elementary that the mere recitation of a
newly discovered function or property, inherently
possessed by things in the prior art, does not cause
a claim drawn to those things to distinguish over
the prior art. Additionally, where the Patent
Office has reason to believe that a functional
limitation asserted to be critical for establishing
novelty in the claimed subject matter may, in fact,
be an inherent characteristic of the prior art, it
possesses the authority to require the applicant to
prove that the subject matter shown to be in the
prior art does not possess the characteristic relied
on. [Citation omitted]. This burden was involved in
In re Ludtke, 58 CCPA 1159, 441 F.2d 660, 169 USPQ
563 (1971), and is applicable to product and process
claims reasonably considered as possessing the
allegedly inherent characteristics.4
For the foregoing reasons, we determine that the examiner has
reason to believe that the adsorber of Bauer possessed equilibrium
and mass transfer zones as well as a ratio Q within the claimed
range. Accordingly, the burden has shifted to appellant to prove
that the prior art Bauer does not possess these characteristics.
See In re Best, supra.
Appellant admits that the process disclosed in Bauer “may
inherently possess ‘a mass transfer zone’ and ‘an equilibrium zone’
as those terms are defined in the present application.” Brief,
Appeal No. 2003-1529
Application No. 08/499,442
5We note that independent claim 17 on appeal, which
appellant has not separately argued, only recites an equilibrium
zone and does not require a mass transfer zone.
7
page 8.5 However, appellant argues that Bauer does not teach that
using a controlled ratio Q provides advantages by increasing the
lifetime of the molecular sieves and their adsorption effectiveness
(Brief, page 6). Appellant further argues that Bauer teaches the
use of alumina for other purposes than removing water as taught by
appellant (Brief, page 7), and the examiner’s estimate of the ratio
of alumina to molecular sieve is “not really accurate.” Id.
Appellant’s arguments are not persuasive. As discussed above,
the examiner finds that Bauer discloses a ratio of volume of
alumina to volume of alumina and molecular sieve for the entire
adsorber within the claimed range for Q (Answer, page 3).
Furthermore, Bauer teaches the use of alumina for the same purpose
as appellant, namely to effectively remove water from the feedstock
gas, although it also prevents polymers from fouling the expensive
molecular sieve (col. 2, ll. 25-30, and col. 4, ll. 4-9). The
results desired by Bauer are also the same as appellant, namely
increasing the lifetime of the molecular sieves (col. 7, ll. 31-35)
and their adsorption effectiveness (col. 6, ll. 14-17). Finally,
as discussed above (see footnote 3), the examiner’s “estimate”
Appeal No. 2003-1529
Application No. 08/499,442
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would not materially be affected by taking into account the volumes
of the support materials such as gravel and wire mesh.
Appellant argues that the examiner’s estimate of the volume
ratio of Bauer is based on the entire volume of the vessel 3 rather
than solely on the volume of the equilibrium zone within an
adsorber as recited in the claims on appeal (Brief, page 8; Reply
Brief, page 3). This argument is not persuasive for several
reasons. We note that the equilibrium zone may be the only zone
in the adsorber (see claim 17 on appeal), apparently corresponding
to a process where the adsorbent was not saturated (specification,
page 5, ll. 15-22). Thus it appears that the volume ratio of the
equilibrium zone would correspond to the initial charging volume
ratio. Additionally, the specification teaches that “the volume of
alumina and of molecular sieve correspond to the volumes determined
at the time of charging of the adsorber.” Specification, page 6,
ll. 7-10. Finally, as discussed above, the feedstock, process
conditions, amounts of alumina and molecular sieve, and desired
results taught by Bauer are the same or substantially similar to
the claimed process, and thus the examiner has reason to believe
that the equilibrium zone, the mass transfer zone, and the volume
ratios of alumina and molecular sieve found in Bauer would have
Appeal No. 2003-1529
Application No. 08/499,442
9
been the same or substantially similar to the claimed zones and
volume ratios. See In re Best, supra.
Appellant argues the specific values of Q recited in dependent
claims 4, 5, 25, 26, and 20-22 (Brief, pages 10-11). For reasons
adequately discussed above, we determine that the examiner has
reasonable belief that the volume ratios of Bauer would have been
the same or similar to those claimed.
Appellant also argues that there are significant differences
between the claim 24 process and the Bauer process, namely that
claim 24 is directed to natural gas while Bauer discloses a feed
gas of cracked ethane (Brief, page 10). This argument is not
persuasive since Bauer is directed generally to the drying of a gas
(col. 1, l. 6), and exemplifies a gas containing methane (Table 1;
col. 5, l. 39). The object of Bauer is “to dry a gas” (col. 4, l.
10). Although appellant argues that the “natural gas” recited in
claim 24 contains “primarily methane,” we note that appellant is
relying on the examples in the specification and not on any claimed
limitation (Brief, page 10).
For the foregoing reasons, we determine that the examiner has
established a prima facie case of anticipation which has not been
adequately rebutted by appellant. Accordingly, we affirm the
Appeal No. 2003-1529
Application No. 08/499,442
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examiner’s rejection of claims 3-5, 7, 17, and 20-26 under
35 U.S.C. § 102(b) over Bauer.
B. The Rejection under § 103(a) over Bauer
The examiner finds that Bauer does not specifically disclose
the method of preparation of the alumina, as recited in claim 6 on
appeal, nor the specific surface velocity as recited in claim 8 on
appeal (Answer, page 4). Nonetheless, the examiner concludes that
the alumina product is the same or similar regardless of its method
of preparation, and the modification of the surface velocity would
have been well within the ordinary skill in the art absent a
showing of unexpected results (id.).
Appellant repeats the arguments against Bauer as discussed
above (Brief, page 11), while merely stating that the limitations
of claims 6 and 8 on appeal are “nowhere disclosed in any cited
reference.” Brief, page 12. This argument is not well taken since
the examiner has admitted that Bauer does not specifically recited
the limitations of claims 6 and 8. Appellant has not addressed
the product-by-process format of claim 6, even as included in
the process claim 3, and has failed to point out how the product
alumina differs from the alumina of Bauer. See In re Wertheim,
541 F.2d 257, 271, 191 USPQ 90, 103 (CCPA 1976)(it is the
patentability of the product defined by product-by-process claims
Appeal No. 2003-1529
Application No. 08/499,442
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which must be gauged against the prior art, not the processes of
making the product). Additionally, appellant has not established
that the surface velocity of claim 8 produces some unexpected
result over the flow rate in the process of Bauer (see Table 1;
col. 5, ll. 33-34). See In re Woodruff, 919 F.2d 1575, 1578,
16 USPQ2d 1934, 1936 (Fed. Cir. 1990).
For the foregoing reasons and those set forth in the Answer,
we determine that the examiner has established a prima facie case
of obviousness in view of the reference evidence. Based on the
totality of the record, including due consideration of appellant’s
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103(a). Accordingly, we affirm the examiner’s rejection of claims
6 and 8 under 35 U.S.C. § 103(a) over Bauer.
C. The Rejection under § 103(a) over Matyear
The examiner finds that Matyear discloses a process for drying
a gaseous mixture by passing the mixture into an adsorption zone
to remove water, where the adsorption zone comprises a first zone
containing active alumina and a second zone containing a molecular
sieve (Answer, page 4). The examiner recognizes that Matyear does
not specifically disclose that the adsorption zone comprises a mass
transfer zone and an equilibrium zone (id.). However, the examiner
Appeal No. 2003-1529
Application No. 08/499,442
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finds that the Matyear adsorption is operated under the same or
similar conditions to the claimed adsorption zone (see col. 3, ll.
4-23), thus inherently producing a mass transfer zone and an
equilibrium zone (Answer, pages 4-5).
The examiner also recognizes that Matyear does not
specifically disclose Q values within the claimed range (Answer,
page 5). However, the examiner concludes that it would have been
obvious to have modified the Matyear process by using an adsorption
zone with the claimed Q values since Matyear teaches use of alumina
and molecular sieve amounts within broad ranges (id., citing vessel
10 with a molecular sieve adsorbent between 1 and 10 inches or more
with the remainder of the column filled with alumina; see col. 2,
ll. 62-70). We agree.
Appellant argues that Matyear does not provide sufficient
information to allow even a hindsight calculation of a Q ratio, nor
does Matyear provide any motivation to suggest such a calculation
of Q (Brief, pages 14-15). This argument is not persuasive since
Matyear exemplifies a drying vessel 10 about 6 feet in diameter
and 20 feet high, disclosing that the amount of molecular sieve is
usually between about 1-10 inches or more in thickness (col. 2, ll.
62-70, italics added). Furthermore, Matyear specifically teaches
that “[i]t is possible for each drying operation to determine the
Appeal No. 2003-1529
Application No. 08/499,442
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relative amounts of the conventional [alumina] and sieve material
giving optimum results consistent with cost.” Col. 2, ll. 20-22.
Therefore Matyear has taught that the relative amounts of alumina
and molecular sieve are result-effective variables and their
optimization would have been well within the ordinary skill in the
art. See In re Woodruff, supra; In re Boesch, 617 F.2d 272, 276,
205 USPQ 215, 219 (CCPA 1980); In re Antonie, 559 F.2d 618, 620,
195 USPQ 6, 8-9 (CCPA 1977); In re Sebek, 465 F.2d 904, 907, 175
USPQ 93, 95 (CCPA 1972); and In re Aller, 220 F.2d 454, 456, 105
USPQ 233, 235 (CCPA 1955).
We adopt our remarks from above concerning the Q values for
the equilibrium zone relative to the entire vessel. We also adopt
our remarks about the specific arguments concerning the dependent
claims from above, including claims 6 and 8 (Brief, page 14). With
regard to claim 24 (Brief, page 15), we adopt our remarks from
above and note that Matyear is directed to the drying of gases in
general (col. 1, l. 15; col. 1, ll. 59-62; and especially col. 4,
ll. 3-5).
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
obviousness based on the reference evidence. Based on the totality
of the record, including due consideration of appellant’s
Appeal No. 2003-1529
Application No. 08/499,442
14
arguments, we determine that the preponderance of evidence weighs
most heavily in favor of obviousness within the meaning of section
103(a). Accordingly, we affirm the examiner’s rejection of claims
3-8, 17 and 20-26 under 35 U.S.C. § 103(a) over Matyear.
Appeal No. 2003-1529
Application No. 08/499,442
15
D. Summary
The rejection of claims 3-5, 7, 17 and 20-26 under 35 U.S.C.
§ 102(b) as anticipated by Bauer is affirmed. The rejection of
claims 6 and 8 under 35 U.S.C. § 103(a) as unpatentable over Bauer
is affirmed. The rejection of claims 3-8, 17 and 20-26 under
35 U.S.C. § 103(a) as unpatentable over Matyear is affirmed.
The decision of the examiner is affirmed.
Appeal No. 2003-1529
Application No. 08/499,442
16
No time period for taking any subsequent action in connection
with this appeal may be extended under 37 CFR § 1.136(a).
AFFIRMED
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
THOMAS A. WALTZ ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
JEFFREY T. SMITH )
Administrative Patent Judge )
TAW/jrg
Appeal No. 2003-1529
Application No. 08/499,442
17
BURNS DOANE SWECKER & MATHIS L L P
POST OFFICE BOX 1404
ALEXANDRIA, VA 22313-1404
Appeal No. 2003-1529
Application No. 08/499,442
18
APPENDIX
3. A process for drying a gaseous or liquid mixture by
passing said mixture into an adsorber, the adsorber including a
water adsorption equilibrium zone and a water adsorption mass
transfer zone, the equilibrium zone comprising an upstream alumina
zone and a downstream molecular sieve zone, the mass transfer zone
comprising a downstream portion of the molecular sieve zone, water
concentration in the mass transfer zone varying from zero to the
maximum water concentration at the equilibrium zone, wherein in the
water adsorption equilibrium zone of the adsorber, the ratio Q of
the volume of alumina to that of alumina and of the molecular sieve
is between 0.05 and 0.8 at an instant when water breaks through at
an exit of the adsorber.
17. A process for drying a gaseous or liquid mixture by
passing said mixture into an adsorber, the adsorber including a
water adsorption equilibrium zone comprising an upstream alumina
zone and a downstream molecular sieve zone, the upstream alumina
zone adsorbing water in liquid or gaseous form and the downstream
molecular sieve zone adsorbing water in gaseous form during the
process, a volume ratio of the alumina zone and the molecular sieve
zone being 5 to 80%.