Ex parte Simonson et al.

Board of Patent Appeals and Interferences

Feb 12, 2001

08505338 (B.P.A.I. Feb. 12, 2001)

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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was not written for publication and is not binding precedent of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. 21

UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte ERIK SIMONSON, MATS WALLIN,
SUNE BENGTSSON and ERIK DAHLQVIST
______________

Appeal No. 1997-4399
Application 08/505,338
_______________

HEARD: January 24, 2001
_______________

Before JOHN D. SMITH, WARREN, and DELMENDO, Administrative Patent Judges.

WARREN, Administrative Patent Judge.
Decision on Appeal and Opinion
This is an appeal under 35 U.S.C. § 134 from the decision of the examiner finally rejecting
claims 1 through 11.1
We have carefully considered the record before us, and based thereon, find that we cannot
sustain the ground of rejection of claims 1 through 8 and 11 under 35 U.S.C. § 103 as being
unpatentable over Murray and Anderson et al., and the ground of rejection of claims 9 and 10 under 35
U.S.C. § 103 as being unpatentable over Kignell in view of Murray and Perry et al.2,3

1 See the amendments of August 29, 1996 (Paper No. 8) and September 18, 1996 (Paper No. 10).
2 The references are listed at page 3 of the answer.
Appeal No. 1997-4399
Application 08/505,338
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It is well settled that “[t]he consistent criterion for determination of obviousness is whether the
prior art would have suggested to one of ordinary skill in the art that [the claimed process] should be
carried out and would have a reasonable likelihood of success, viewed in the light of the prior art.
[Citations omitted] Both the suggestion and the expectation of success must be founded in the prior art,
not in the applicant’s disclosure.” In re Dow Chem. Co., 837 F.2d 469, 473, 5 USPQ2d 1529, 1531
(Fed. Cir. 1988). Thus, a prima facie case of obviousness is established by showing that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or knowledge
generally available to one of ordinary skill in the art would have led that person to the claimed invention
as a whole, including each and every limitation of the claims, without recourse to the teachings in
appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350, 1358, 47 USPQ2d 1453, 1458
(Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573,
37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Oetiker, 977 F.2d 1443, 1447-48, 24 USPQ2d
1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring); In re Laskowski, 871 F.2d 115, 10 USPQ2d
1397 (Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d 1596, 1598-1600 (Fed.
Cir. 1988). We agree with appellants that the examiner has failed to carry his burden of making out a
prima facie case of obviousness with respect to the claimed invention.
We find that the process for the selective removal of hydrogen sulphide from gas containing
hydrogen and carbon dioxide by absorption in carbonate-containing alkaline solutions is specified in
appealed claim 1 to “multiple stages of circulating carbonate-containing alkaline solutions” and
“adjusting the pH in each stage . . . to about 9-12 by the addition of a hydroxide” to obtain a “total
sulphide content exceeding about 0.30 mole/l in the outgoing solution.” Thus, the claim requires at least
that the hydrogen sulphide must be recovered as a sulphide.
We find that Murray discloses that the prior art process of merely absorbing hydrogen sulphide
in an alkaline solution from a gas containing the sulphide and carbon dioxide is inefficient (col. 2, lines
19-33). Murray teaches that the absorption of hydrogen sulfide by maintaining the aqueous alkaline
solution, which contains sodium ions and preferably carbonate ions, at a pH of about 9.0 and above so

3 The examiner withdrew the ground of rejection of claims 1 through 8 and 11 under § 103 as being
Appeal No. 1997-4399
Application 08/505,338
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that “continuous absorption of the sulphur containing compounds may be achieved through the removal
of the absorbed sulphide ions in the aqueous solution by oxidation with an oxygen containing gas,”
wherein the “principal oxidation product is the thiosulphate ion with lesser amounts of sulphate and
sulphite ions as well as minor amounts of elemental sulphur” (col. 2, lines 34-48; emphasis supplied).
While Murray teaches that it is “critical . . . that the pH of the aqueous alkaline solution is maintained
about 9.0 and above throughout the absorption” (col. 3, lines 31-43), it is clear from the reference that
the disclosed process “substantially increase hydrogen sulphide absorption by maintaining the
equilibrium partial pressure of the hydrogen sulfide [sic] at a level near zero . . . by reducing the effective
concentration of sodium sulfide [sic] . . . [which is] kept at a level near zero by the oxidation of the
hydrogen sulfide [sic] absorbed in the solution” (col. 3, lines 62-73). We find that Anderson discloses a
process (col. 4, lines 29-39), without stating the pH at which it is conducted, that is similar to the
process which Murray acknowledged to be in the prior art.
Upon comparing the claimed invention with the applied combination of references, we cannot
agree with the examiner’s position that one of ordinary skill in this art would “by-pass the oxidation step
. . . of Murray” in order to obtain a “sulphide solution” that can be used to prepare “white liquor” as
suggested by Anderson in a similar process (answer, e.g., pages 5-6 and 10-13). Indeed, as appellants
point out in their brief, there is no apparent suggestion, teaching or motivation in the combined teachings
of the references which would have led one of ordinary skill in this art to delete the oxidation step taught
by Murray to be necessary for the “continuous” absorption of hydrogen sulphide. We also fail to find in
the applied references any apparent suggestion, teaching or motivation to modify the prior art process
acknowledged by Murray to be inefficient by using multiple stages of circulating carbonate-containing
alkaline solutions, each maintained at a pH of about 9-12, to achieve the amount of total sulphide
content specified in appealed claim 1. Thus, on this record, we must conclude that the examiner’s
position is based on impermissible hindsight. See generally, Dow Chem. Co., supra.
We have considered the apparatus encompassed by appealed claim 9 with respect to the
specific structure recited therein, that is, without respect to the material intended to be worked on by the

unpatentable over Kent in view of Kignell (answer, page 2).
Appeal No. 1997-4399
Application 08/505,338
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apparatus or to the manner in which the apparatus is intended to be employed. Cf. Ex parte
Masham, 2 USPQ2d 1647, 1648 (Bd. Pat. App. & Int. 1987), and cases cited therein. Thus, we
interpret claim 9 to specify an apparatus comprising at least “a container . . . containing packing
arranged in a number of successive stages” and means for supplying, treating and moving a fluid in,
through and between the stages.
In comparing the claimed apparatus encompassed by claim 9 with the teachings of the applied
combination of references, we must agree with appellants (brief, e.g., pages 19-20) that the differences
between the structure of the apparatus disclosed in Kignell and the structure of the claimed apparatus
are not merely (1) the means for supplying a reagent to a solution in each stage and (2) the absence of
packing in “one of the scrubbing stages” as contended by the examiner (answer, pages 6-8; emphasis
supplied; see also pages 13-14). Indeed, claim 9 specifies that the packing creates “successive stages”
and the means for intra- and inter-stage movement of a solution. At best, Murray would have suggested
means to add a reagent to one stage as shown in that reference and Perry et al. disclose “impingement
separators” which, in the absence of an explanation, do not appear to involve fluid flow with respect to
“stages” in the manner specified for the claimed apparatus.
Thus, in considering the claimed apparatus encompassed by appealed claim 9 as a whole,
including each and every claim limitation, we fail to find in the combination of references applied by the
examiner any teaching, suggestion or motivation in the applied prior art taken as a whole which would
have led one of ordinary skill in this art to the claimed apparatus. Indeed, the modifications suggested
by Murray and/or Perry et al. would not have resulted in any limitation of the claimed apparatus.
Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed.
Cir. 1988). Therefore, it is manifest from the record that the examiner had to rely on hindsight gained
from appellants’ invention in order to reach his conclusion that the invention encompassed by the
appealed claims would have been obvious from the applied prior art. See generally, Fine, supra.

Appeal No. 1997-4399
Application 08/505,338
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The examiner’s decision is reversed.
Reversed

JOHN D. SMITH )
Administrative Patent Judge )
)
)
)
CHARLES F. WARREN ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
ROMULO H. DELMENDO )
Administrative Patent Judge )

Appeal No. 1997-4399
Application 08/505,338
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