Ex Parte Kurian et al

Board of Patent Appeals and Interferences

Jul 31, 2007

10434038 (B.P.A.I. Jul. 31, 2007)

The opinion in support of the decision being entered today
is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
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Ex parte JOSEPH V. KURIAN and YUANFENG LIANG

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Appeal 2007-1669
Application 10/434,038
Technology Center 1700
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Decided: July 31, 2007
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Before EDWARD C. KIMLIN, THOMAS A. WALTZ, and
JEFFREY T. SMITH, Administrative Patent Judges.

SMITH, Administrative Patent Judge.

DECISION ON APPEAL
Statement of the Case
This is an appeal under 35 U.S.C. § 134 from a final rejection of
claims 1-5, 7-13, 15-22, and 24-26. We have jurisdiction under 35 U.S.C.
§ 6.
Appellants’ invention relates to an improved process for rendering
non-aqueous waste streams that contain aldehydes and ketones non-toxic to
Appeal 2007-1669
Application 10/434,038

biological treatment systems. The process comprises contacting the waste
streams with organic monoamines, organic polyamines and/or ammonium
compounds at essentially ambient conditions (Specification 2-3).
Representative independent claim 1, as presented in the Brief, appears
below:
1. A process for reducing aldehyde and/or ketone concentration in a
non-aqueous waste stream, said process comprising

(a) contacting a non-aqueous waste stream comprising at least one
aldehyde and/or at least one ketone with an effective amount of at least one
organic nitrogen-containing base compound selected from the group
consisting of methylamine, ethylamine, dimethylamine, polyamines and
mixtures thereof; and

(b) maintaining said waste stream in contact with the at least one
organic nitrogen-containing base compounds for a sufficient length of time
to allow at least a 50% reduction in aldehyde and/or ketone concentration.

The Examiner relies on the following references in rejecting the
appealed subject matter:
Lashley US 3,923,648 Dec. 2, 1975
Roof US 5,606,094 Feb. 25, 1997
Kurian US 6,325,945 B2 Dec. 4, 2001

Claims 1-5, 8-13, 16-22, and 24-26 stand rejected under 35 U.S.C.
§ 103 as unpatentable over Kurian in view of Roof; and claims 7 and 15
stand rejected under 35 U.S.C. § 103 as unpatentable over Kurian and Roof
in view of Lashley.
The issue presented for review is as follows:
Has the Examiner reasonably determined that a person having
ordinary skill in the art would have been led to perform a process for
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Application 10/434,038

reducing aldehyde and/or ketone concentration in a non-aqueous waste
stream by contacting the stream with a nitrogen containing base compound
within the meaning of 35 U.S.C. § 103? On this record, we answer this
question in the affirmative.
Under 35 U.S.C. § 103, the factual inquiry into obviousness requires a
determination of: (1) the scope and content of the prior art; (2) the
differences between the claimed subject matter and the prior art; (3) the level
of ordinary skill in the art; and (4) secondary considerations. Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17-18, 148 USPQ 459, 467
(1966). “[A]nalysis [of whether the subject matter of a claim would have
been obvious] need not seek out precise teachings directed to the specific
subject matter of the challenged claim, for a court can take account of the
inferences and creative steps that a person of ordinary skill in the art would
employ.” KSR Int’l Co. v. Teleflex, Inc., 127 S. Ct. 1727, 1740-41, 82
USPQ2d 1385, 1396 (2007) quoting In re Kahn, 441 F.3d 977, 988, 78
USPQ2d 1329, 1336-37 (Fed. Cir. 2006); see also DyStar Textilfarben
GmBH & Co. Deutschland KG v. C.H. Patrick Co., 464 F.3d 1356, 1361, 80
USPQ2d 1641, 1645 (Fed. Cir. 2006)(“The motivation need not be found in
the references sought to be combined, but may be found in any number of
sources, including common knowledge, the prior art as a whole, or the
nature of the problem itself.”); In re Bozek, 416 F.2d 1385, 1390, 163 USPQ
545, 549 (CCPA 1969)(“Having established that this knowledge was in the
art, the examiner could then properly rely, as put forth by the solicitor, on a
conclusion of obviousness ‘from common knowledge and common sense of
the person of ordinary skill in the art without any specific hint or suggestion
in a particular reference.’”); In re Hoeschele, 406 F.2d 1403, 1406-07, 160
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Application 10/434,038

USPQ 809, 811-812 (CCPA 1969) (“[I]t is proper to take into account not
only specific teachings of the references but also the inferences which one
skilled in the art would reasonably be expected to draw therefrom. . .”). The
analysis supporting obviousness, however, should be made explicit and
should “identify a reason that would have prompted a person of ordinary
skill in the art to combine the elements” in the manner claimed. KSR, 127
S.Ct. at 1731, 82 USPQ2d at 1389.
The Examiner has found that Kurian describes the treatment of aqueous
waste streams containing alpha, beta-ethylenically unsaturated aldehydes
and ketones non-toxic to biological treatment systems. This method
involves contacting the streams with organic monoamines, organic
polyamines including diamines, triamines and tetramines, and/or inorganic
ammonium compounds. The subject matter of the claimed invention is
directed to the treatment of non-aqueous waste streams whereas the Kurian
reference is directed to the treatment of aqueous waste streams. (Answer 5).
The Examiner has found that Roof teaches methods for removal of
aldehyde or ketones, such as acrolein, from the gaseous or liquid mixture by
reacting with polyamines or other nitrogen containing chemical scavengers
(Roof, col. 1, l. 65- col. 2, l. 7). Roof teaches that the described method is
expected to work in both aqueous and non-aqueous systems (Roof, col. 2, ll.
43-56) (Answer 5). As such, Roof teaches that a person of ordinary skill in
the art would have reasonably expected that the chemical reaction of an
aldehyde or ketone with a polyamine or nitrogen containing compound
would occur in both an aqueous system and a non-aqueous system.
The Examiner concludes that it would have been obvious to one of
ordinary skill in the art to utilize the polyamines of Kurian in the treatment
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Appeal 2007-1669
Application 10/434,038

of non-aqueous waste streams for the removal of aldehydes and ketones.
(Answer 5).
Appellants contend that the question “central to the rejection of the
claims is whether or not the speculation in the ‘094 reference [Roof] rises to
the level of a fair disclosure that can be utilized to support an obviousness
rejection.” Appellants assert that there are no details provided in Roof as to
how to actually use the disclosed scavenger compounds in a non-aqueous
system (Br. 6). Appellants further contend that there is no motivation to
combine the teachings of the references (Br. 7).
Appellants’ contentions are not persuasive. The Roof reference
establishes that a person of ordinary skill in the art would have reasonably
expected that the chemical reaction that takes place between an aldehyde or
ketone with a polyamide or nitrogen containing compound would occur in
both an aqueous system and a non-aqueous system. “For obviousness under
§ 103, all that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Appellants have not provided evidence with technical reasoning that
establishes a person of ordinary skill in the art would not have reasonably
expected that in both an aqueous system and a non-aqueous system the
chemical reaction that takes place between an aldehyde or ketone with a
polyamide or nitrogen containing compound would occur.
Regarding the rejection of claims 7 and 15, Appellants contend that
the teachings of Kurian, Roof, and Lashley did not provide a teaching,
suggestion or motivation to arrive at the present invention. Appellants also
contend that the only motivation to combine the teachings of the references
is based upon hindsight by the Examiner (Br. 9). We do not agree. The
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Application 10/434,038

Examiner cites the Lashley reference for describing that the particular amine
compounds of the claims are known to be suitable for reaction with acrolein
(Answer 7). Appellants have not challenged this teaching of the reference.
As stated above, a person of ordinary skill in the art would have reasonably
expected that in a non-aqueous waste stream comprising an aldehyde or
ketone a chemical reaction between the aldehyde or ketone with a polyamide
or nitrogen containing compound would occur.
For the reasons set forth above and in the Answer we affirm the
rejection of claims 1-5, 7-13, 15-22, and 24-26. As a final point with respect
to the § 103 rejections, we note that Appellants base no argument upon
objective evidence of nonobviousness, such as unexpected results.
ORDER
The rejection of claims 1-5, 7-13, 15-22, and 24-26 under 35 U.S.C.
§ 103(a) is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv)(2006).
AFFIRMED

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