James Edward. Critchfield et al.

Patent Trials and Appeals Board

Aug 14, 2020

14402382 - (D) (P.T.A.B. Aug. 14, 2020)

UNITED STATES PATENT AND TRADEMARK OFFICE
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
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
14/402,382 11/20/2014 James Edward Critchfield TH5339-US-PCT 1028
23632 7590 08/14/2020
SHELL OIL COMPANY
P O BOX 576
HOUSTON, TX 77001-0576
EXAMINER
BERNS, DANIEL J
ART UNIT PAPER NUMBER
1736
NOTIFICATION DATE DELIVERY MODE
08/14/2020 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):
Shelldocketing@cpaglobal.com
USPatents@Shell.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte JAMES EDWARD CRITCHFIELD,
DIEGO PATRICIO VALENZUELA,
LOREN CLARK WILSON, and JINGJUN ZHOU
__________

Appeal 2019-002731
Application 14/402,382
Technology Center 1700
____________
Before JEFFREY B. ROBERTSON, GEORGE C. BEST, and
MICHAEL G. McMANUS, Administrative Patent Judges.
BEST, Administrative Patent Judge.
DECISION ON APPEAL
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 1–7 of Application 14/402,382. Final
Act. (January 5, 2018). We have jurisdiction under 35 U.S.C. § 6.
For the reasons set forth below, we reverse.

1 We use the word “Appellant” to refer to “Applicant” as defined in 37
C.F.R. § 1.42. Appellant identifies Shell Oil Co. as the real party in interest.
Appeal Br. 2.
Appeal 2019-002731
Application 14/402,382
2
I. BACKGROUND
The ’382 Application describes an absorbent composition that can be
used to selectively remove hydrogen sulfide from gas streams containing
hydrogen sulfide and carbon dioxide. Spec. 1.2 Claim 1 is representative of
the ’382 Application’s claims and is reproduced below from the Claims
Appendix of the Appeal Brief.
1. An absorbent composition, comprising:
(a) from 75 wt. % to 98 wt.%, based on the total weight of
said absorbent composition, of an aqueous solvent; and
(b) from 2 wt.% to 25 wt.%, based on the total weight of said
absorbent composition, of an organic co-solvent,
wherein said aqueous solvent comprises
from 20 wt. % to 70 wt. %, based on the total
weight of said aqueous solvent, of an amination
reaction product of a polydispersed polyethylene
glycol (PEG) mixture having an average molecular
weight that is in the range of from 180 to 1000 and
t-butylamine, and
from 30 wt. % to 80 wt. % water, based on the
total weight of said aqueous solvent, and
wherein said organic co-solvent is selected from the
group consisting of sulfones, sulfone derivatives, and
sulfoxides.
Appeal Br. 17 (paragraphing, indentation, and emphasis added).

2 We note that Appellant cites the patent application publication instead of
the Specification-as-filed. This is improper. Cf. 37 C.F.R. § 41.37(c)(1)(iii)
(2018). In this opinion, we follow our practice of citing the as-filed
Specification.
Appeal 2019-002731
Application 14/402,382
3
II. REJECTION
On appeal, the Examiner maintains the following rejection: Claims 1–
7 are rejected under 35 U.S.C. § 103(a) as unpatentable over Ho.3 Final
Act. 5.
III. DISCUSSION
Appellant argues for reversal of the rejection of claims 1–7 as a group.
We, therefore, select claim 1 as representative of the claims on appeal. 37
C.F.R. § 41.37(c)(1)(iv) (2019).
Appellant argues that the rejection of claim 1 should be reversed for
six different reasons. Appeal Br. 5–12. Each of these arguments, however,
centers around a single claim limitation: claim 1’s requirement that the
absorbent composition be comprised of “an amination reaction product of a
polydispersed polyethylene glycol (PEG) mixture having an average
molecular weight that is in the range of from 180 to 1000 and t-butylamine.”
Id. The thrust of Appellant’s arguments is that Ho does not describe or
suggest this claim limitation. Id.
For the reasons set forth below, we agree with Appellant. Thus, we
reverse the rejection of claims 1–7 of the ’382 Application.
We begin by considering the proper interpretation of the phrase
“polydisperse polyethylene glycol (PEG) mixture.” See, e.g., Oakley, Inc. v.
Sunglass Hut Int’l, 316 F.3d 1331, 1339 (Fed. Cir. 2003) (explaining that
anticipation and obviousness require comparison of the properly construed
claims to the available prior art); In re Paulsen, 30 F.3d 1475, 1479 (Fed.

3 US 4,894,178, issued January 16, 1990.
Appeal 2019-002731
Application 14/402,382
4
Cir. 1997) (“[T]o properly compare [the prior art] with the claims at issue,
we must construe the term [in dispute] to ascertain its scope and meaning.”).
After examination of the ’382 Application’s Speification, we
determine that the term “polydisperse polyethylene glycol (PEG) mixture”
means a mixture of PEG molecules of varying molecular weights. To a
person having ordinary skill in the art, the ordinary meaning of the word
“polydisperse” in this context is “[w]hen a polymer exists over a wide range
of molecular masses.” Definition of polydisperse–Chemistry Dictionary,
Chemicool Dictionary,
https://www.chemicool.com/definition/polydisperse.html (accessed August
10, 2020).
The ’382 Application’s Specification is consistent with this
interpretation.
Ho describes the use of a mixture of amines produced by the mono-
and di-amination of a PEG with t-butyl amine. E.g., Ho 1:7–14, 3:14–41. In
its specification, Ho places special emphasis on the hindered amines
produced by the mono- and di-amination of triethylene glycol with t-butyl
amine. Id. at 1:7–14, 9:25–45. Ho, however, states that the PEG starting
product can have anywhere from 3 to 7 ethoxy units, i.e., HO–(CH2–CH2–
O)x–H, where x = 3 –7. Id. at 3:14–41.
The Examiner found that Ho describes or suggests reacting t-butyl
amine with a polydisperse PEG mixture because Ho does not ipsis verbis
exclude the use of such a mixture. Answer 7–9. Specifically, the Examiner
states that
Ho’s teaching of BTEE [bis(t-butyl aminoethoxy)-ethane] and
EEETB [ethoxyethoxyethanol-t-butyl amine]being prepared by
reacting tBA [t-butyl amine] with triethylene glycol (“TEG”,
i.e.[,] Ho’s PEG structure where x = 2) is merely exemplary and
Appeal 2019-002731
Application 14/402,382
5
does not preclude employing other PEG variants instead of or
in addition to TEG, so long as their x = 2 to 6 as Ho teaches.
MPEP 2123 . . . not only moots appellant’s argument that Ho’s
teachings are limited to its specific examples employing TEG
as its PEG starting material, but does so with even more force
because none of Ho’s appropriate PEG starting materials (i.e.[,]
having an x value of 2 to 6) are taught to be nonpreferred.
Rather, TEG is merely exemplary of Ho’s small list of
appropriate PEG species of x = 2 to 6, and appellant has made
no showing that Ho disparages or otherwise teaches away from
selecting multiple of its PEG variants other than TEG, or ≥1 of
its non-TEG PEG variants in addition to TEG.
Id. at 7.
The Examiner’s position is insufficient to support the rejection. The
Examiner has not provided any reason for a person having ordinary skill in
the art at the time of the invention to have modified Ho’s description of the
catalytic amination of a single PEG species with t-butyl amine to yield
mono-and di-aminated products to use a mixture of multiple PEG species as
a starting material. In the absence of such an explanation, we are forced to
conclude that the Examiner improperly relied upon hindsight in reaching the
conclusion that the subject matter of claim 1 would have been obvious to a
person of ordinary skill in the art at the time of the invention.
IV. CONCLUSION
In summary:
Claims Rejected 35 U.S.C. § REFERENCE(S)/BASIS Affirmed Reversed
1–7 103(a) Ho 1–7
REVERSED