Ex parte YAN

Board of Patent Appeals and Interferences

Feb 18, 1998

07887404 (B.P.A.I. Feb. 18, 1998)

Application for patent filed May 19, 1992. According to1
appellant, this application is a continuation of Application
07/628,311, filed December 17, 1990, now abandoned.
-1-
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journal and (2) is not binding precedent of the Board.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. 27
UNITED STATES PATENT AND TRADEMARK OFFICE
________________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
________________
Ex parte TSOUNG Y. YAN
________________
Appeal No. 94-2855
Application 07/887,4041
________________
ON BRIEF
________________
Before KIMLIN, JOHN D. SMITH and GARRIS, Administrative Patent
Judges.
KIMLIN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal from the final rejection of claims 14-45,
all the claims remaining in the present application. Claim 14 is
illustrative:
Appeal No. 94-2855
Application 07/887,404
-2-
14. A method for increasing the AACI of an aqueous
diethanolamine solution which has been at least partially
deactivated from contact with an acid gas, said method comprising
contacting said aqueous diethanolamine solution with hydrogen in
the presence of a hydrotreating catalyst under conversion
conditions of temperature from 30EC to 400EC, liquid hourly space
velocity from 0.01 hr to 100 hr , pressure from 1 to 14,000-1 -1
kPa, hydrogen dosage from 1 to 100 mols H per mol of2
diethanolamine, and contact time sufficient to convert
diethanolamine degradation products to diethanolamine.
The examiner relies upon the following references as
evidence of obviousness:
Sze et al. (Sze) 3,429,804 Feb. 25, 1969
Kniel 3,696,162 Oct. 3, 1972
Oleck et al. (Oleck) 4,440,630 Apr. 3, 1984
Yan 4,795,565 Jan. 3, 1989
Rubin et al. (Rubin) 4,954,325 Sept. 4, 1990
Appellant's claimed invention is directed to increasing the
AACI (acid absorption capacity index), or regenerating, an
aqueous diethanolamine solution which has been deactivated by
contact with an acid gas which contains H S and CO . The method2 2
involves contacting the deactivated solution with hydrogen in the
presence of a hydrotreating catalyst. The result of such
contacting is the conversion of degradation products of
diethanolamine into diethanolamine. Page 6 of appellant's
specification lists several known degradation products of
diethanolamine which result from the reaction of diethanolamine
and acid gas comprising H S and CO .2 2
Appeal No. 94-2855
Application 07/887,404
-3-
Appealed claims 27 and 45 stand rejected under 35 U.S.C.
§ 112, fourth paragraph. Claim 27 stands rejected under
35 U.S.C. § 112, first paragraph, as being based upon an original
specification that does not provide descriptive support for the
claimed subject matter. Claim 35 stands rejected under 35 U.S.C.
§ 112, second paragraph, as being indefinite. In addition, the
appealed claims stand rejected under 35 U.S.C. § 103 as follows:
(1) Claims 14, 17-19, 26, 27, 30-34, 37-39 and 45 over Kniel
in view of Sze;
(2) Claims 15, 16, 28, 29, 35 and 36 over Kniel in view of
Sze and Yan;
(3) Claims 20, 21 and 40 over Kniel in view of Sze and
Oleck;
(4) Claims 22-25 and 41-44 over Kniel in view of Sze, Oleck
and Rubin.
Upon careful consideration of the opposing arguments
presented on appeal, we concur with appellant that the prior art
applied by the examiner fails to establish a prima facie case of
obviousness for the claimed subject matter.
Kniel, the primary reference in all of the examiner's
rejections, discloses a process of removing acid gases from a
gaseous stream by contacting the stream with an aqueous
alkanolamine solution of the kind used by appellant. The aqueous
Appeal No. 94-2855
Application 07/887,404
-4-
amine solution of Kniel is regenerated in unit 23 by withdrawing
acid gas through overhead line 24. Kniel does not disclose
regenerating degradation products of the alkanolamine in any way,
let alone by means of the hydrogenation step claimed by
appellant. However, the key to the examiner's rejection is
Kniel's disclosure that a hydrocarbon solvent is mixed with the
alkanol amine solution to remove troublesome dienes which tend to
polymerize and foul the system. Since Sze discloses separating
dienes from a gaseous stream also containing aromatic
hydrocarbons by treating the stream with hydrogen and a
hydrogenation catalyst, the examiner reasons that it would have
been obvious for one of ordinary skill in the art to treat the
diene-containing stream of Kniel with Sze's hydrogenation step to
separate the dienes therefrom, and thereby inherently effect
appellant's conversion of alkanolamine degradation products to
alkanol amines.
The flaw in the examiner's reasoning is two-fold. First,
since Kniel removes dienes from the spent alkanolamine solution
by addition of a hydrocarbon solvent, and Sze discloses
hydrogenation for separating dienes and the like from aromatic
compounds, there would have been no motivation for one of
ordinary skill in the art to modify the Kniel process by
replacing the treatment with hydrocarbon solvent with Sze's
Appeal No. 94-2855
Application 07/887,404
-5-
hydrotreatment. Secondly, there is no teaching or suggestion in
the prior art that hydrotreating a mixture of an aqueous
alkanolamine solution and hydrocarbon solvent comprising dienes
would result in the conversion of degradation products of
alkanolamines. For instance, the reaction kinetics may strongly
favor the hydrogenation of dienes over the conversion of
alkanolamine degradation products, and the examiner has not
established otherwise. It is well settled that a determination
of inherency cannot be established by probabilities or
possibilities, but only by inevitability. In re Oelrich,
666 F.2d 578, 581, 212 USPQ 323, 326 (CCPA 1981); In re Wilding,
535 F.2d 631, 635-36, 190 USPQ 59, 63-64 (CCPA 1976). Since the
other secondary references applied by the examiner do not remedy
the deficiency of the combination of Kniel and Sze, we will not
sustain the examiner's rejections under 35 U.S.C. § 103.
It is stated on page 1 of the Reply Brief that "[a]pplicant
will not contest the rejection of claims 27, 35, and 45 under
35 U.S.C. 112." Accordingly, perforce, we will sustain the
examiner's § 112 rejections of claims 27, 35 and 45.
In conclusion, based on the foregoing, the examiner's
rejection of claims 27, 35 and 45 under 35 U.S.C. § 112 is
affirmed. The examiner's rejections of the appealed claims under
Appeal No. 94-2855
Application 07/887,404
-6-
35 U.S.C. § 103 are reversed. The examiner's decision is
affirmed-in-part.
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
EDWARD C. KIMLIN )
Administrative Patent Judge )
)
)
)
BRADLEY R. GARRIS ) BOARD OF PATENT
Administrative Patent Judge ) APPEALS AND
) INTERFERENCES
)
)
JOHN D. SMITH )
Administrative Patent Judge )
Appeal No. 94-2855
Application 07/887,404
-7-
Charles J. Speciale
Mobil Oil Corp.
Office of Patent Counsel
3225 Gallows Road
Fairfax, VA 22037