Ex Parte Bhambhani Godhwani et al

Patent Trial and Appeal Board

Mar 28, 2018

13634569 (P.T.A.B. Mar. 28, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
13/634,569 01/30/2013
23632 7590 03/30/2018
SHELL OIL COMPANY
POBOX576
HOUSTON, TX 77001-0576
FIRST NAMED INVENTOR
Vijay Bhambhani Godhwani
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.
TS 5700USAP 8316
EXAMINER
DIGGS, TANISHA
ART UNIT PAPER NUMBER
1761
NOTIFICATION DATE DELIVERY MODE
03/30/2018 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):
USPatents@Shell.com
Shelldocketing@cpaglobal.com
shellusdocketing@cpaglobal.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte VIJA Y BHAMBHANI GODHWANI
and JOHN NICHOLAS SARLIS
Appeal2017-007065
Application 13/634,569 1
Technology Center 1700
Before JEFFREY T. SMITH, CHRISTOPHER L. OGDEN, and
MERRELL C. CASHION, JR., Administrative Patent Judges.
SMITH, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
This is an appeal under 35 U.S.C. § 134(a) from the final rejection of
claims 1-3 and 5-15. We have jurisdiction under 35 U.S.C. § 6(b ).
We reverse.
The invention relates generally to a process "for the regeneration of an
acid gas absorbent comprising an amine and heat stable salts by phase
1 According to Appellants, the real party in interest is Shell Oil Company.
See App. Br. 2.
Appeal2017-007065
Application 13/634,569
separation." (Spec. 3, 11. 29--33). Independent claim 1 is representative of
the appealed subject matter and 1 is reproduced below:
1. A process for the regeneration of an acid gas absorbent
comprising an amine and heat stable salts by phase separation,
compnsmg:
a) mixing the acid gas absorbent with an alkaline solution, to
form a mixture with a pH above the pH equivalence point of the
amine, wherein the acid gas absorbent comprises in the range of
from 15 up to 40 wt% of amine based on the total weight of the
acid gas absorbent;
b) cooling the mixture to a temperature below 50°C;
c) separating the mixture into a regenerated acid gas absorbent
and a waste stream; and
d) collecting the regenerated acid gas absorbent separated from
the waste stream.
Claims Appendix to App. Br.
Appellants (see generally App. Br.) request review of the following
rejections:
I. Claims 1-8, 11, and 12 rejected under 35 U.S.C. §103(a) as
unpatentable over the combination of Buningh (GB
1,118,687) in view of Rooney (WO 98/32519). 2
II. Claims 9--10 rejected 35 U.S.C. §103(a) as unpatentable
over the combination of Buningh, Rooney, and Van Scoy
(US 3,658,462).
2 It is noted in the final action the Examiner inadvertently identifies Buningh
as US 1, 118, 687. (Final Act. 3 ).
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Application 13/634,569
III. Claim 13 rejected 35 U.S.C. § 103(a) as unpatentable over
the combination of Buningh, Rooney and Keller (US
4,970,344).
IV. Claims 14 and 15 rejected 35 U.S.C. §103(a) as
unpatentable over the combination of Buningh, Rooney,
Keller, and George, Jr (US 6,245, 128).
The complete statement of the rejections on appeal appear in
the Final Office Action. (Final Act. 3-9.)
OPINION
The dispositive issue for this appeal is:
Did the Examiner err in determining Buningh describes a process for
the regeneration of an acid gas absorbent comprising an amine and heat
stable salts by phase separation that would have suggested cooling the acid
gas absorbent with an alkaline solution mixture to a temperature below 50°C
as specified by independent claim 1? 3
After consideration of the evidence in this appeal record in light of the
respective positions advanced by the Examiner and Appellants, we
determine that Appellants have identified reversible error in the Examiner's
determination that the subject matter recited in claims 1-3 and 5-15 would
3 The Examiner cited Rooney to describe other elements of the claimed
invention not related to our dispositive issue. (Final Act. 4--5).
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Appeal2017-007065
Application 13/634,569
have been obvious to one of ordinary skill in the art within the meaning of
35 U.S.C. § 103(a). Accordingly, we reverse all the appealed rejections. 4
The Examiner found Buningh describes a process for the regeneration
of an acid gas absorbent comprising an amine and heat stable salts by phase
separation that differs from the claimed subject matter by failing to disclose
cooling the mixture to a temperature below 50°C as specified by
independent claim 1. (Final Act. 4). The Examiner found Buningh
describes the reaction takes place in the temperature range of 15-200°C
which overlaps the claimed subject matter. (Final Act. 3--4). The Examiner
asserts it would have been obvious to a person having ordinary skill in the
art to cool the reaction mixture below 50°C because the suitable
temperatures disclosed by Buningh overlap the current range. (Final Act. 5).
In support of this position, the Examiner relies on In re Wertheim, 541 F .2d
257 (CCPA 1976); In re Woodruff919 F.2d 1575 (Fed. Cir. 1990).
During examination, the Examiner bears the initial burden of
establishing a prima facie case of obviousness. In re Oetiker, 977 F.2d
1443, 1445 (Fed. Cir. 1992). "Rejections on obviousness grounds cannot be
sustained by mere conclusory statements; instead, there must be some
articulated reasoning with some rational underpinning to support the legal
conclusion of obviousness." KSR Int'! v. Teleflex, Inc., 550 U.S. 398, 418
(2007) (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006)); see also,
Ball Aerosol and Specialty Container, Inc. v. Ltd. Brands, Inc., 555 F.3d
984, 993 (Fed. Cir. 2009) ("[T]he analysis that 'should be made explicit'
4 We limit our discussion to independent claim 1, the only independent
claim.
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Appeal2017-007065
Application 13/634,569
refers not to the teachings in the prior art of a motivation to combine, but to
the court's analysis.").
Appellants argue independent claim 1 requires both a specific
temperature range as well as an active cooling step before separating into a
regenerated acid gas absorbent and waste stream. Appellants argue the
Examiner has failed to demonstrate how Buningh discloses the cooling
limitation or provide any rationale to modify Buningh to disclose this
limitation. (App. Br. 4--5). Appellants also argue Buningh teaches that "the
regenerated solutions need not be cooled or heated if they are immediately
subjected to the process of the invention" and therefore teaches away from
the claimed invention (App. Br. 5 citing Buningh, 3, 11. 81-84).
The Examiner's rejections cannot be sustained. Appellants have
persuasively argued that the Examiner's proposed motivation for arriving at
the claimed invention is not supported by the evidence of record. The
Examiner has not provided an adequate technical explanation or directed us
to evidence that establishes Buningh or the additional prior art references
would have suggested performing a process for the regeneration of an acid
gas absorbent comprising an amine and heat stable salts by phase separation
including cooling the mixture to a temperature below 50°C as specified by
independent claim 1.
For the foregoing reasons and those stated in the Brief, we determine
that the Examiner's conclusion of obviousness is not supported by facts.
"Where the legal conclusion [of obviousness] is not supported by facts it
cannot stand." In re Warner, 379 F.2d 1011, 1017 (CCPA 1967).
Accordingly, the Examiner's rejections of claims 1-3 and 5-15 over the
cited prior art are reversed.
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Application 13/634,569
ORDER
The obviousness rejections of claims 1-3 and 5-15 are reversed.
REVERSED
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