Ex parte Zisman

Board of Patent Appeals and Interferences

Mar 5, 1999

08406272 (B.P.A.I. Mar. 5, 1999)

Application for patent filed March 16, 1995. According to appellant, this application is a continuation of1
Application 08/181,738, filed January 18, 1994, now abandoned.
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written for publication in a law journal and (2) is
not binding precedent of the Board.
Paper No. 24
UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
Ex parte STAN A. ZISMAN
____________
Appeal No. 97-3640
Application No. 08/406,2721
____________
ON BRIEF
____________
Before WINTERS, WILLIAM F. SMITH, and SPIEGEL, Administrative Patent Judges.
SPIEGEL, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the examiner's final rejection of claims
1 through 25, which are all of the claims pending in this application. We affirm-in-part.
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Application No. 08/406,272
Page 2
BACKGROUND
The appellant's invention relates to a process for substantially removing CO from a CO2 2
containing C -C olefin fluid stream by (1) adding water to the fluid to form a water-containing fluid;2 6
and, (2) contacting the water-containing fluid with a composition comprising an alkali metal compound
and/or an alkaline earth metal compound, wherein the water and composition are each present in an
amount effective to substantially remove CO . Claims 1, 12 and 23 are illustrative of the claimed2
subject matter.
1. A process comprising the steps of:
(1) adding water to a fluid to form a water-containing fluid; and thereafter
(2) contacting said water-containing fluid with a composition which comprises
an oxygen-containing metal compound selected from the group consisting of an alkali
metal compound, an alkaline earth metal compound, and combinations of two or more
thereof; wherein said fluid comprises at least one C -C olefin and carbon dioxide; the2 6
physical form of said fluid is selected from the group consisting of gas, liquid, and
combinations thereof; said process is carried out under conditions sufficient to
substantially remove said carbon dioxide from said fluid; and said composition and said
water are each present in an effective amount to substantially remove said carbon
dioxide from said fluid.
12. A process according to claim 1 wherein said water-containing fluid is
saturated with water.
23. A process for substantially removing carbon dioxide from a fluid stream
comprising the steps of:
(1) adding water to a fluid to form a water-containing fluid stream; and
thereafter
(2) contacting said water-containing fluid stream with a substantially solid
composition under conditions sufficient to substantially remove said carbon dioxide
from said fluid stream wherein said fluid stream comprises an olefin selected from the
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group consisting of ethylene, propylene, and combinations thereof; said composition is
soda lime; the weight ratio of said carbon dioxide to said fluid stream is in the range of
from 0.000001:1 to 0.01:1; and the amount of said soda lime is in the range of from 2 g
to 5 g per g of CO in said water-containing fluid stream which is contacted with said2
composition.
Claim 7 requires a weight ratio of carbon dioxide to olefin from about 0.000001:1 to about 0.1:1.
Claim 9 requires contacting the olefin with about 1 to about 20 g of oxygen-containing metal compound
per g of carbon dioxide. Claim 13 requires a weight ratio of "added" water to olefin from about
0.0001:1 to about 0.1:1. Claims 16 and 18 require the carbon dioxide removal step to be carried out
at a temperature from about 1EC to about 50EC and at a pressure from about 0 psig to about 2500
psig, respectively.
The prior art references of record relied upon by the examiner in rejecting the appealed claims
are:
Cheron et al. (Cheron) 4,063,899 Dec. 20, 1977
Jones, Jr. et al. (Jones) 4,313,916 Feb. 02, 1982
Skraba 4,384,160 May 17, 1983
Strack et al. (Strack) 5,090,977 Feb. 25, 1992
McKernan et al. (McKernan) 2,267,096 Nov. 11, 1993
(UK Patent Application)
HYDROCARBON PROCESSING excerpt (HP), "Sofnolime RG," April 1992.
The prior art references of record relied upon by the appellant are:
Ventriglio et al. (Ventriglio) 3,619,130 Nov. 09, 1971
Hogan et al. (Hogan) 4,493,715 Jan. 15, 1985
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Application No. 08/406,272
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THE ISSUES
The issues presented for review are: (1) whether the examiner erred in rejecting claims 1-5
under 35 U.S.C. § 102(b) as anticipated by Skraba; (2) whether the examiner erred in rejecting claims
1-5, 9-11 and 16-19 under 35 U.S.C. § 103(a) as unpatentable over Skraba in view of Strack; (3)
whether the examiner erred in rejecting claims 23-25 under 35 U.S.C.
§ 103(a) as unpatentable over McKernan in view of Jones; (4) whether the examiner erred in rejecting
claims 1-25 over 35 U.S.C. § 103(a) as unpatentable over HP in view of Cheron; and, (5) whether the
examiner erred in provisionally rejecting claims 1-25 under the judicially created doctrine of
obviousness-type double patenting over claims 1-25 of copending Application 08/162,241 in view of
Cheron.
DELIBERATIONS
Our deliberations in this matter have included evaluation and review of the following materials:
(1) the instant specification, including all of the claims on appeal; (2) appellant's Appeal Brief before the
Board; (3) the Examiner's Answer; (4) the above-cited prior art references; and, (5) the pending claims
in Application 08/162,241.
OPINION
Appeal No. 97-3640
Application No. 08/406,272
Page 5
1. Rejection of claims 1-5 under 35 U.S.C. § 102(b) as anticipated by Skraba
Skraba describes a process for steam cracking an alkane hydrocarbon stream wherein alkane
1, 2 feeding through a vaporizer 3 has steam 4 added thereto and the admixture is then fed into a
cracking furnace 8 where the feed is heated to ethylene production conditions. The furnace effluent 11
containing ethylene, propylene, carbon dioxide, steam and other materials is passed to prequench zone
12 to decrease the temperature of the effluent 11 so coking and deposition is minimized in subsequent
equipment. The prequenched effluent is passed to transfer line exchanger 16 from which the cooled
mass is passed to final quench 18 and then to aqueous caustic washer 23 (for CO removal). From2
caustic washer 23 the mass is passed to fractionation 26 for recovery of wanted products. (col. 2, line
67 to col. 3, line 42; col. 4, lines 22-25, "Furnace Effluent (11)"; and, the Figure)
The appellant argues (a) steam is added to a saturated hydrocarbon, e.g., ethane/propane, not
to an olefin, at line 4; (b) adding steam to a gas which is not an olefin and is to be thermally cracked at
1500E to 1600E F is not what is being claimed; and, (c) water is added to the transfer line exchanger
16, not to the olefin. Since Skraba excludes the step (1) of the claimed invention of adding water to a
fluid to form a water-containing fluid comprising at least one C -C olefin and CO and step (2) that2 6 2
said water-containing fluid is contacted with..., Skraba cannot anticipate claims 1-5 (Br. page 7).
The examiner states "the position of the final rejection is: that what transpires in cracking furnace
8 of Skraba, constitutes exactly a step of 'adding water to an olefin-containing fluid to form a water-
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containing fluid' " (Ans. page 11, paragraph 4). "Note further that the steam-alkane mixture '6' which is
continuously flowing into the cracking furnace '7' wherein the olefin is first created, can in fact constitute
an adding of water to an olefin-containing fluid" (Ans. page 12, paragraph three).
In our view, however, there is insufficient evidence in this record of exactly what is transpiring in
the furnace in order to determine whether the process which is taking place in the furnace can
reasonably be said to include the "adding" step required by the claims. For example, if the furnace has
a flow-through feed line and a portion of the incoming feed line of alkane-steam mixture were visualized
as three sequential segments during the process, then as the first segment was emerging from the
furnace as a cracked effluent, the second segment would be within the furnace in the process of being
cracked, and the third segment would just be entering the furnace. The third segment would not appear
to be adding water/steam to either the first or the second segments. It is unclear how the second
segment could add water/steam to itself. The examiner simply has not explained how "what transpires
in cracking furnace 8" inherently adds water to an olefin-containing fluid. It is well established that
inherency cannot be established by probabilities or possibilities. In re Oelrich, 666 F.2d 578, 581,
212 USPQ 323, 326 (CCPA 1981) citing Hansgirg v. Kemmer, 102 F.2d 212, 214, 40 USPQ 665,
667 (CCPA 1939).
Moreover, the examiner's statement
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that the Final rejection clearly states that the limitation of "adding water" is met by the
addition of steam at line 4. This has nothing to do with a transfer line exchanger. (Ans.
page 12, paragraph four)
backpedals from his earlier statement
[a]ccording to the figure, water is added to said gaseous stream in a transfer line
exchanger. This cools the mass which is then sent to an aqueous caustic (i.e., NaOH)
washer in order to remove the carbon dioxide. (Ans. page 3, third paragraph from the
bottom)
Suffice to say, to the extent the examiner refers to the addition of steam from line 4 to line 6 as the
"adding" step required by the claims, the examiner has not established that line 6 contains the required
olefin and carbon dioxide.
Based upon this record, we conclude the examiner has not established that Skraba teaches the
first step of the claimed invention, i.e. of adding water to a fluid to form a water-containing fluid
comprising at least one C -C olefin and CO A reference which does not satisfy one limitation of a2 6 2.
claim does not anticipate. Jamesburg Corp. v. Litton Industrial Products, 756 F.2d 1556, 225
USPQ 253 (Fed. Cir. 1985); Atlas Powder Co. v. E.I. DuPont de Nemours Co., 750 F.2d 1569,
224 USPQ 409 (Fed. Cir. 1984).
The rejection is reversed.
2. Rejection of claims 1-5, 9-11 and 16-19 under 35 U.S.C. § 103 (a) over
Skraba in view of Strack
Skraba has been described supra.
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Strack describes a process for separating propylene from a mixture of cracked hydrocarbons
produced by a cracking unit. A feed 10 of alkanes, naphtha or gas oil, or combinations thereof is
introduced into a cracking furnace 12. The cracked gases 11 leaving the furnace 12 are quenched 14
and compressed 17. The compressed gases are fed into an acid gas removal vessel 16 where they
undergo acid gas removal, typically with the addition of a base such as NaOH 18. The gases are dried
in dehydration system 13 and thereafter separated into various fractions. (abstract; col. 4, lines 15-43).
The examiner relies on Strack "[t]o the extent the Skraba reference is construed as not
describing sodium hydroxide in its description of the 'caustic' zone" (Ans. page 4, paragraph 4). The
examiner also relies on Strack to show that effluent steam-cracked gases in line 19 have water in them
when they contact the caustic washer/acid gas removal vessel based upon subsequent drying in
dehydration system 13 (Ans. paragraph bridging pages 4-5). Finally, the examiner states the relative
amounts of sodium hydroxide (oxygen-containing metal compound) to CO (claims 9-11); and, the2
specific reaction conditions of temperature (claims 16-17) and pressure (claims 18-19) are well known,
art-recognized, result-effective variables and concludes it would have been obvious to one of ordinary
skill in the art to optimize these variables (Ans. page 5, paragraph three).
Appellant argues neither Skraba nor Strack teaches a positive step of "adding" water to an
olefin-containing fluid and thereafter contacting the water-containing fluid with a composition such as
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soda lime (Br. pages 8-9). Furthermore, water can be present in the acid gas removal vessel 16 either
due to the NaOH itself which is only moisture-free if in a strictly dry environment such as a dry box; or,
as a result of the chemical reaction between the acid gas and the NaOH. The presence of water in line
19 does not suggest a positive step of "adding water" to an olefin-containing gas or that positively
"adding water" to an olefin-containing gas would improve the CO removal therefrom (Br. pages 9-10). 2
Moreover, the claimed process is not limited to cracked gases, but can be used with substantially pure
stored olefin (Br. page 10). Finally, because the combined disclosure of Skraba and Strack does not
suggest adding water to an olefin-containing fluid to improve CO removal, the references are irrelevant2
to the conditions recited in claims 9-11 and 16-19 which parameters provide exceptional results in CO2
removal (Br. pages 10-11).
Notably, the examiner does not rely on Strack for teaching adding water to a fluid to form a
water-containing fluid comprising at least one C -C olefin and CO . We agree with appellant that2 6 2
Strack does not cure the deficiency of Skraba, i.e., Strack does not teach a positive step of "adding"
water to an olefin-containing fluid, regardless of dehydration system 13. Since neither Skraba nor
Strack disclose or suggest the first step of the claimed invention, i.e., of adding water to a fluid to form a
water-containing fluid comprising at least one C -C olefin and CO , the examiner has failed to establish2 6 2
a prima facie case of obviousness in regard to the subject matter as a whole. 35 U.S.C. § 103(a).
With regard to the discussions of the claimed invention's applicability to substantially pure stored olefin
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and of exceptional results (Br. pages 10-11), having concluded that the examiner has not established a
prima facie case of obviousness from the teachings of the prior art we do not reach this rebuttal
evidence.
The rejection is reversed.
3. Rejection of claims 23-25 under 35 U.S.C. § 103(a) over McKernan in view of Jones
McKernan removes carbon dioxide from liquid and gaseous olefin-containing fluids by passing
the fluid through a bed of solid particulate absorbent material comprising sodium hydroxide and/or
potassium hydroxide; alumina and/or zinc oxide; lime; and, optionally copper II oxide (abstract), e.g.,
prior to catalysis to avoid poisoning or otherwise adversely affecting the catalyst employed (page 1,
paragraph two). Preferably, the composition contains up to 10 wt. % NaOH and 40-97% Ca(OH) ,2
i.e., soda lime (Table page 3). According to the examiner, McKernan differs from claim 23 in failing to
state literally that the olefin fluid also comprises water (Ans. page 6, paragraph one).
Jones discloses
...in order to make suitable grade ethylene for the production of certain grades of
polyethylene, small concentrations of CO (of approximately 10-25 ppm) in the olefin2
feed have to be reduced to less than 1ppm. One present practice uses a caustic pellet
absorber bed. Two major problems associated with this procedure are: (i) only about
3 percent of the NaOH present in the bed is converted to Na CO (via 2NaOH + CO2 3 2
W Na CO + H O); and (ii) after the outer coat of the pellet is converted to the2 3 2
carbonate, the water generated can cause particle agglomeration and bridging which in
turn causes channeling and finally complete solidification of the bed. The latter is a
particularly difficult problem because the bed contents at times have had to be removed
manually. An aqueous caustic solution has been proposed as an alternative. One
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problem with this approach is that the water vapor from the solution is introduced into
the ethylene, thus necessitating zeolite water-absorption beds which (i) would be large
and costly to install; and (ii) would be expensive to regenerate. (col. 2, lines 24-45)
Accordingly, Jones removes trace amounts of carbon dioxide from olefin gases by passing the gas
through an essentially non-aqueous liquid solution of alkali or alkaline earth metal hydroxides and/or
weak acid salts and certain selected liquid polyhydric alcohols (abstract). In cases where the ethylene
feed also contains trace amounts of water, a potassium-based system eliminates the need for water-
removing adsorbents or at least reduces their size considerably (col. 14, lines 25-34).
According to the examiner,
[i]t would have been obvious to one of ordinary skill in the art at the time the
invention was made to have contacted a fluid comprising ethylene, CO and water with2
a soda-lime product such as is disclosed in McKernan, in order to remove CO ,2
because McKernan teaches that CO should be removed from ethylene in order not to2
poison downstream catalysts, and because Jones teaches that there exist fluids
comprising CO , water, and ethylene from which CO should be removed prior to2 2
catalytic polymerization into polyethylene.
With respect to the weight ratio of CO to fluid recited in claim 23, note that2
Jones teaches CO as being present in 10-25 ppm (col. 2, lines 24-25), which falls into2
the broad range claimed. (Ans. page 6, last two paragraphs)
Appellant argues neither McKernan, nor Jones, nor the combination of McKernan and Jones,
disclose or suggest (i) contacting a water-containing fluid with a substantially solid composition (Br.
page 12, last paragraph) or (ii) the positive step of adding water to an olefin fluid to improve CO2
removal and contacting the resulting water-containing fluid with a composition such as soda lime (Br.
page 13, paragraph two). Appellant submits the examiner not only continues to ignore the step of
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"adding water ..." but also continues to interpret the claimed invention as merely requiring a water-
containing fluid (Br. page 12, paragraph one). Furthermore, both the non-aqueous system and the
express disclosure "that any relatively small amount of water vapor contained in the non-reacting gas
feed (introduced therein prior to or during a process for the production or treatment of the non-reacting
gas) is scavenged by the polyhydric alcohol and alkali of the absorbent solution" (col. 4, lines 53-57) in
Jones teaches away from the claimed invention which specifically calls for adding water (Br. page 12,
paragraphs two and three).
We initially note that we agree with the examiner that McKernan explicitly discloses a solid
CO absorbent material at page 2, lines 7-9 (Ans. pages 14-15). 2
However, the question remains whether or not McKernan and/or Jones disclose or suggest a
step of adding water to an olefin-containing fluid. At page 2, paragraph 3, McKernan discloses his
absorbent composition preferably contains copper II oxide, "especially when the composition is to be
used in the treatment of dry (anhydrous) hydrocarbon materials." This clearly suggests the olefin-
containing fluid can be either wet or dry to begin with. Moreover, use of "wet" samples is seen in the
examples of McKernon. Similarly, Jones suggests the ethylene feed can already be wet, i.e. contain
trace amounts of water as an impurity (col. 10, lines 7-11 and col. 14, lines 30-33). Belatedly, the
examiner urges that the claimed "adding of water" reads on the "introducing of water" suggested by
Jones (Ans. paragraph bridging pages 14-15). However, the examiner has not established that any of
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Application No. 08/406,272
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the "wet" streams described by the reference disclose or suggest the "adding" step required by the
claims. For the reasons outlined above, we are not persuaded that the examiner has established a
prima facie case of obviousness.
The rejection is reversed.
4. Rejection of claims 1-25 under 35 U.S.C. § 103(a) over HP in view of Cheron
At the outset, we note that although appellant has indicated that claims 1-11 and 13-15 stand
or fall together (Br. page 4), he has separately argued the CO impurity content of claims 7-8 and 20-2
23; the weight ratio of soda lime to CO of claims 9-11 and 20-23; the temperature and pressure2
parameters of claims 16-19; and, the weight ratio of "added" water to olefin of claims 13-15 (Br. page
18, paragraph two). In addition, appellant has indicated that claim 12 does not stand or fall together
with claims 1-11 and 13-25 because claim 12 specifically calls for a water-saturated, olefin-containing
fluid (Br. page 4). Thus, we will consider the merits of the rejection as it pertains to (a) claim 1, (b)
specific parameter claims 7, 9, 13, 16 and 18. (c) water-saturated, olefin-containing fluid claim 12.
a. Claim 1
As to claim 1, HP describes removing low levels of acidic impurities, such as CO , from natural2
gas, ethylene, propylene and LPG containing less than 50 ppb acid impurities using a mixture of NaOH
and Ca(OH) , i.e., soda lime (entire excerpt).2
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Cheron relates to removing CO from a gas or gas mixture. Cheron discloses that gas passing2
through a CO removal filter cartridge of soda lime reduces the water content of the soda lime, thereby2
resulting in a high decrease in the absorption capacity of the filter cartridge with respect to CO (col. 2,2
lines 15-20). Cheron suggests two means for re-introducing water into the soda lime, one means being
flowing the gas through a directly humidified portion of the filter and allowing the gas to carry along a
certain quantity of water which humidifies the upper portion of the filter cartridge (col. 3, lines 8-12)
and the other means being introducing water into the gas to be decarbonated, using any known means
to increase the hygrometric degree (col. 5, lines 3-6). Optimum efficiency of the decarbonator is
permitted by automatic compensation of the water losses due to the passage of the gas through the
cartridge so that the water content of the soda lime remains substantially in the range from 10 to 30%
(col. 4, lines 42-48).
According to the examiner
[i]t would have been obvious to one of ordinary skill in the art at the time the
invention was made to have added water to the gas treated by HP prior to its contact
with soda lime, because Cheron teaches that adding water to a gas prior to its contact
with soda lime humidifies the soda lime and hence enhances CO absorption such as is2
desired by HP. (Ans. page 8, paragraph two)
We find no error in the examiner's conclusion of obviousness in regard to claim 1.
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Appellant argues Cheron is non-analogous art because Cheron (1) neither discloses nor
suggests removing CO from an olefin-containing fluid nor (2) relates to the problem of high CO2 2
content poisoning an olefin polymerization catalyst (Br. page 14 and paragraph bridging pages 17-18).
The determination that a reference is from a nonanalogous art is twofold, requiring first a
decision if the reference is within the field of the inventor's endeavor; and, if not, whether the reference
is reasonably pertinent to the particular problem with which the inventor was involved. In re Wood,
599 F.2d 1032, 202 USPQ 171 (CCPA 1979).
Here, references relating to removal of CO from gaseous fluids are clearly reasonably pertinent2
to the field of appellant's endeavor. Both HP and Cheron disclose removal of CO from gaseous fluids. 2
While disclosing utility with ethylene and propylene (i.e., olefin) gases, HP is not limited to olefin gases
based upon HP's disclosure of LPG which one of ordinary skill in the art would have recognized also
contain alkanes. Cheron discloses removing CO from a generic gas or gas mixture. The examiner has2
argued
the Cheron reference is not limited with respect to what type of gas or gas mixture can
be "decarbonated"; ... therefore, Cheron is presumed to be an enabling teaching for the
removal of CO from any gas, including an olefin-containing one, and therefore is2
reasonably pertinent to the problem of CO removal reported in the HP excerpt. (Ans.2
page 15, paragraph five)
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Appellant has not responded to this argument. Therefore, based upon this record, we agree with the
examiner that HP and Cheron are properly combinable; and, that Cheron cannot be properly
characterized as being from a non-analogous art.
Secondly, appellant argues Hogan discloses any reference disclosing or suggesting CO2
removal from a non-olefin-containing gas cannot be a proper reference for the claimed invention (Br.
page 14, last sentence). However, as noted by the examiner, "no such statement is seen in Hogan nor
[has been] specifically pointed out by appellants [sic]" (Ans. page 15, last paragraph). Therefore, this
argument is not persuasive.
Appellant next argues soda lime, not a gas, is humidified with water in Cheron (Br. page 15,
first paragraph and paragraph bridging pages 17-18). This argument is factually incorrect. We agree
with the examiner that Cheron explicitly teaches adding water to, i.e., increasing the hygrometric degree
of, the gas to be decarbonated at col. 5, lines 3-6. Therefore, this argument is not persuasive.
Additionally, appellant argues the specification (pages 7-9) demonstrates unexpected results,
i.e., a CO capacity as high as 57 weight % when water is added to an ethylene-containing fluid versus2
only 1.5 weight % in the absence of water addition and when compared to HP which discloses a CO2
capacity or loading of 10% (Br. page 16, paragraph two).
Example I at pages 7-9 of the specification is not sufficient to overcome the prima facie case
of obviousness for the following reasons. First, it appears that the evidence presented in appellant's
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specification confirms what a person having ordinary skill would have expected based on teachings
found in Cheron, i.e., adding water to the gas passing through the soda lime absorbent will compensate
for any reduction of the water content of the soda lime caused by the gas flow, thereby permitting more
efficient, better purification of the gas. As often stated by the U.S. Court of Customs and Patent
Appeals, expected beneficial results are evidence of obviousness of a claimed invention, just as
unexpected beneficial results are evidence of unobviousness. In re Skoll, 523 F.2d 1392, 187 USPQ
481 (CCPA 1975); In re Skoner , 517 F.2d 947, 186 USPQ 80 (CCPA 1975); In re Gershon,
372 F.2d 535, 152 USPQ 602 (CCPA 1967). Second, we agree with the examiner that there is
insufficient data to determine what breakthrough level corresponds to the 10% CO loading in HP2
(Ans. page 17, paragraph three). Appellant has the burden of explaining the data, whether in the form
of a direct or indirect comparison with the closest prior art. This includes noting any differences in
reagent composition, assay parameters, etc. between the prior art and the experimental conditions used
for the comparison proferred, as well as the reasons for and significance of such differences. Third, the
single data point of example 1 does not support the scope of claim 1. Therefore, based on this record,
we find the argued "unexpected results" lacks sufficient probative value to overcome the rejection.
b. Claims 7, 9, 13, 16 and 18
As to specific parameter claims 7, 9, 13, 16 and 18, the examiner found
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that the suggested inlet impurity in HP of "less than 10 ppm" amount of CO meets the2
CO content ranges of claims 7-8 and 20-23, which range from 1 ppm up to at least2
10,000 ppm CO .2
With respect to the ratio of 1-10 grams of soda lime per g of CO in the fluid,2
as in claims 9-10 and 20, note that the suggested 10% loading in HP (i.e. 10 g of CO2
loaded on 100g soda lime) meets this limitation. With respect to the narrower ranges of
2-5 grams soda lime per gram CO as in claims 9-11 and 21-23, note that it would2
have been obvious to use lesser amounts of soda lime in a CO -removal bed, with the2
expected result that CO would still be substantially removed. Note that the HP2
excerpt contemplates twin beds of soda lime in series, so any breakthrough from a first
bed could be caught in a second bed, both operating at the suggested loading levels.
With respect to the temperatures and pressures of claims 16-19 (e.g., 1-50EC
and 1-1700 psig), note that the HP process suggests ambient (25EC) temperature and
1200 psig as operable.
With respect to the exact quantity of water "added" in claims 13-15, this would
be amendable to optimization by routine experimentation, as has been held to be
obvious in In re Aller, et al. 105 USPQ 233 and In re Reni, 164 USPQ 245. (Ans.
pages 8-9)
Given the above teachings, we conclude that the determination of optimum values for the weight
ratio of CO impurity to olefin (claim 7); the weight ratio of soda lime to CO (claims 9); and, the2 2
process temperature and pressure parameters (claims 16 and 18) would have been obvious to one of
ordinary skill in the art. We also conclude that the determination of optimum values for the weight ratio
of "added" water to olefin (claim 13), would also have been obvious to one of ordinary skill in the art,
especially given the direction in Cheron to maintain the water content of the soda lime substantially
constant in the range from 10 to 30% (col. 4, lines 43-49). In re Boesch, 617 F.2d 272, 276, 205
USPQ 215, 219 (CCPA 1980); In re Aller, 220 F.2d 454, 456, 105 USPQ 233, 235 (CCPA
1955).
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Appellant argues
the HP excerpt as well as the combination of HP and Cheron does not suggest these
parameters and the amount of water in claims 13-15 would improve the CO removal2
from an olefin fluid if water is added to the fluid before fluid enters a soda lime. (Br.
page 18, paragraph two)
For the same reasons set forth in § 4a. above, we find the argued "unexpected results" lacks sufficient
probative value to overcome the rejection.
c. Claim 12
As to claim 12, the examiner accepts appellant's argument that claim 12 is separately patentable
(Ans. page 2). Having accepted that appellant is separately arguing claim 12, the examiner fails to
present any reasoning and/or evidence as to why the references disclose or suggest the limitation
"wherein said water-containing fluid is saturated with water." Therefore, we reverse the rejection of
claim 12 under 35 U.S.C. § 103(a) as unpatentable over HP in view of Cheron.
The rejection of claims 1-11 and 13-25 is sustained; the rejection of claim 12 is reversed.
5. Provisional rejection of claims 1-25 under the judicially created doctrine of obviousness-type
double-patenting over claims 1-25 of copending Application no. 08/162,241
in view of Cheron.

At the outset, we note that appellant has indicated that claim 12 does not stand or fall together
with claims 1-11 and 13-25 because claim 12 specifically calls for a water-saturated, olefin-containing
fluid (Br. page 4).
Cheron has been described supra.
Appeal No. 97-3640
Application No. 08/406,272
Page 20
Claims 1-25 (now claims 1-3, 5-9 and 12-25) in copending Application no. 08/162,241 are
directed to a process for removing carbon dioxide from a fluid which comprises at least one C -C2 6
olefin and carbon dioxide by contacting the fluid with a composition comprising (i) an alkali metal
hydroxide, an alkaline earth metal hydroxide or combinations of two or more thereof, and (ii) an
inorganic oxide which is alumina and/or silica, wherein the weight ratio of (i)/(ii) is from about 0.1:1 to
about 5:1.
According to the examiner, none of the claims of the '241 application recite adding water to an
olefin-containing fluid. However,
[i]t would have been obvious to one of ordinary skill in the art at the time the invention
was made to have added water to the gas treated by the copending application prior to
its contact with soda lime, because Cheron teaches that adding water to the gas prior to
its contact with soda lime humidifies the soda lime and hence enhances CO absorption2
such as is desired by the copending application.
Note, with respect to the soda lime limitations of the instant claims, that the
claims of copending '241 clearly suggest combinations of calcium hydroxide and sodium
hydroxide (see, for example, claim 5 of copending '241) and thus the process of the
instant claims limited to soda lime are also not patentably distinct from those of '241.
(Ans. page 10, paragraph three)
Appellant argues col. 3, lines 7-15 of Cheron does not disclose or suggest supplying water to
the soda lime directly from the gas being treated; Cheron is non-analogous art and, therefore, not
combinable with the '241 application; and, claim 12 is patentably distinct from claims 1-11 and 13-25
because claim 12 specifically recites a water-saturated fluid (Br. page 20, paragraph three through page
22, paragraph two). Finally, appellant argues
Appeal No. 97-3640
Application No. 08/406,272
Page 21
as disclosed in Ventriglio (U.S. 3,619,130; of record; Col. 1, lines 44-47), alkali
hydroxides are subject to moisture attack with subsequent caking thus severely limiting
(CO adsorption) capacity. The present invention, as claimed, specifically recites2
adding water to an oxygen-containing compound such as sodium hydroxide.
According to the Ventriglio teaching, the claimed invention cannot have much capacity
for CO removal. However, as discussed above, the present invention shows 57%2
CO removal capacity. The claimed invention is therefore surprising. The Examiner2
should have considered Ventriglio in favor of appellant's claims which are patentable in
view of Ventriglio disclosure. (Br. page 22, paragraph three)

There is nothing of record to indicate that the examiner has addressed the teachings of
Ventriglio. Where appellant has come forward with reasonable rebuttal, whether buttressed by
experiment, prior art references, or arguments, the entire merits of the matter are to be reweighed. In
re Hedges, 783 F.2d 1038, 228 USPQ 685 (Fed. Cir. 1986). Therefore, the issue is not ripe for a
decision on appeal. Accordingly, we vacate the provisional rejection of claims 1-11 and 13-25 under
the judicially created doctrine of obviousness-type double-patenting over claims 1-25 (now 1-3, 5-9
and 12-25) of copending Application no. 08/162,241 in view of Cheron. If prosecution is resumed on
the subject matter of these claims in a continuing application, the examiner should revisit this issue. In
so doing, the examiner should take care to consider and respond to appellant's rebuttal in its entirety.
The examiner accepts appellant's argument that claim 12 is separately patentable (Ans. page 2).
Having accepted that appellant is separately arguing claim 12, the examiner fails to present any
reasoning and/or evidence as to why the references disclose or suggest the limitation "wherein said
water-containing fluid is saturated with water." Therefore, we reverse the rejection of claim 12 under
Appeal No. 97-3640
Application No. 08/406,272
Page 22
the judicially created doctrine of obviousness-type double-patenting over claims 1-25 (now 1-3, 5-9
and 12-25) of copending Application no. 08/162,241 in view of Cheron.
OTHER MATTERS
In the event of further prosecution, appellant and the examiner are advised to consider whether
the recycle propane and/or ethane from line 2 of Skraba contains a small but definite amount of olefin
carried over from the fractionation system 26 such that adding steam 4 to the combined feed line 6
provides a step of "adding" water to an olefin-containing fluid, i.e., line 2.
CONCLUSION
To summarize, the decision of the examiner (1) to reject claims 1-5 under 35 U.S.C.
§ 102(b) as anticipated by Skraba is reversed; (2) to reject claims 1-5, 9-11 and 16-19 under 35
U.S.C. § 103(a) as unpatentable over Skraba in view of Strack is reversed; (3) to reject claims 23-25
under 35 U.S.C. § 103(a) as unpatentable over McKernan in view of Jones is reversed; (4) to reject
claims 1-25 under 35 U.S.C. § 103(a) as unpatentable over HP in view of Cheron is sustained as to
claims 1-11 and 13-25, and reversed as to claim 12; and, (5) to provisionally reject claims 1-25 under
the judicially created doctrine of obviousness-type double-patenting over claims 1-25 (now claims 1-3,
5-9 and 12-25) of copending Application no. 08/162,241 is vacated as to claims 1-11 and 13-25,
and reversed as to claim 12.
Appeal No. 97-3640
Application No. 08/406,272
Page 23
No time period for taking any subsequent action in connection with this appeal may be
extended under 37 CFR § 1.136(a).
Affirmed-in-part
SHERMAN D. WINTERS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
WILLIAM F. SMITH ) APPEALS
Administrative Patent Judge ) AND
) INTERFERENCES
)
)
)
CAROL A. SPIEGEL )
Administrative Patent Judge )
Appeal No. 97-3640
Application No. 08/406,272
Page 24
RICHMOND PHILLIPS
HITCHCOCK AND FISH
PO BOX 2443
BARTLESVILLE OK 74005
APPEAL NO. 97-3640 - JUDGE SPIEGEL
APPLICATION NO. 08/406,272
APJ WINTERS
APJ SMITH, WILLIAM F.
APJ SPIEGEL
DECISION: Affirmed-in-part
Prepared By:
DRAFT TYPED: 06 Dec 99
FINAL TYPED: