Application of Eickmeyer

• Decision Date: 19 July 1979
• Docket Number: Appeal No. 79-525.
• Parties: Application of Allen G. EICKMEYER.
• Court: U.S. Court of Customs and Patent Appeals (CCPA)

602 F.2d 974

Application of Allen G. EICKMEYER.

Appeal No. 79-525.

United States Court of Customs and Patent Appeals.

July 19, 1979.

Warren N. Williams, John M. Collins, Kansas City, Mo. (Schmidt, Johnson, Hovey & Williams, Kansas City, Mo.), attorneys of record, for appellant.

Joseph F. Nakamura, Washington, D. C., for Commissioner of Patents, Fred W. Sherling, Washington, D. C., of counsel.

Before MARKEY, Chief Judge, RICH, BALDWIN and MILLER, Associate Judges, and COWEN,^* Senior Judge.

MILLER, Judge.

This is an appeal from the decision of the Patent and Trademark Office ("PTO") Board of Appeals ("board"), rejecting claims 28, 31, 34-37, and 40.¹ We reverse.

BACKGROUND

The Invention

Appellant's invention relates to a high temperature, catalyzed, absorption-desorption process for selectively removing acid gases (e. g., carbon dioxide and hydrogen sulfide) from gaseous mixtures, as in the purification of natural gas and hydrogen streams employed for making ammonia. The absorption solution, which includes a potassium salt (e.g., potassium carbonate) and a minor amount of an amine catalyst (e.g., an alkanolamine or ethylene polyamine), is contacted at elevated temperatures with the gas stream to be purified. The solution absorbs the objectionable acid gases and is then regenerated, for recycling in the continuous process, by steam stripping the acid gases from the absorption solution. Appellant allegedly discovered that use of the defined amines in conjunction with a carbonate absorption solution at elevated temperatures is precisely contrary to the predicted results² in that a highly catalyzed acid gas absorption solution results. Appellant's claims require "an elevated temperature of at least 56° C." during the absorption process. Claims 28 and 34 are typical:

28. An absorption-desorption process for removing acid gases such as CO2 or H2 S from gaseous mixture containing such acid gases, comprising the step of:

contacting said gaseous mixture with a hot aqueous solution comprising from about 15 to 40% by weight of a potassium salt selected from the group consisting of potassium carbonate, potassium borate and mixtures thereof and a minor amount of an amine selected from the group consisting of the alkanolamines and the ethylene polyamines in an absorption stage to thereby catalyze the absorption of said acid gases from said gaseous mixtures;

maintaining the aqueous solution at an elevated temperature of at least about 56° C. during contact with said gaseous mixture;

regenerating the hot aqueous solution containing said absorbed acid gas in a regeneration stage by steam stripping at least a portion of said acid gas therefrom; and

recycling at least a portion of said regenerated solution for further contact with said gaseous mixture while maintaining said solution at a temperature of at least 56° C.

34. The process of Claim 28 wherein said aqueous solution is contacted with said gaseous mixture in a two-stage absorber.

The Prior Art

The examiner relied upon Mayland³ for its disclosure of the use of specified amines (monoethanolamine, diethanolamine, and mixtures thereof) to catalyze a carbonate absorption process for removing carbon dioxide from gaseous mixtures. Regarding the operating temperature of the process, the Mayland specification states:

The rate of absorption and desorption of CO2 in carbonate solutions is relatively slow. At ambient temperatures equipment so large as to be non-commercial would be required to provide sufficient time of contact. Operating at elevated temperatures in the 220° to 240° F. 104° -116° C range which is generally about the boiling point of the carbonate absorption solution in the regenerator, the rates are improved considerably but the equipment is still somewhat large for a given service compared to other competitive processes.

Nevertheless, none of the Mayland claims recites any qualitative or quantitative temperature limitation, the significance of which will later appear. Claim 1 is illustrative:

1. In a regenerative process for purifying gaseous mixtures by removing carbon dioxide therefrom, in which process the gaseous mixtures are brought into intimate contact with a solution of potassium carbonate whereby carbon dioxide is absorbed from said gaseous mixtures with the consequent conversion of potassium carbonate to potassium bicarbonate, the concentration of the said solution being equivalent to that of a water solution containing substantially 18% to substantially 40% of potassium carbonate, the step of maintaining in the solution a content of substantially 0.5% to 2% of an amine chosen from a group consisting of monoethanolamine and diethanolamine and mixtures thereof, whereby to increase the efficiency of the process.

Acting pursuant to 37 CFR 1.196(b), the board relied upon two further references: a British patent⁴ and a U. S. patent to Benson.⁵ The British patent discloses a carbonate absorption process, which is catalyzed by ethanolamine, for removing carbon dioxide from gas mixtures and is similar to the process disclosed in Mayland. Benson was cited for its teaching of a split-stream technique in an analogous gas purification process.

Proceedings Below

Concurrent with the filing of the application on appeal, appellant filed a notice under 37 CFR 1.205(b) with a supporting explanation and affidavits in order to provoke an interference with Mayland.⁶ In the first office action, the examiner refused to institute an interference, stating:

The limitation of 18-40% in the patent claim is not deemed an immaterial limitation. It is the broadest range disclosed in the patent specification. No basis is found in applicant's disclosure for the claimed amine concentration in a potassium carbonate solution. The affidavit showing of 2.3% amine in a 14.7% solution does not antedate the Mayland patent and no basis is perceived for institution of interference proceedings.

Thereafter, appellant amended his claims in response to numerous prior art rejections made by the examiner and submitted an affidavit under 37 CFR 1.131 (hereinafter "131 affidavit") to antedate the filing date of Mayland.

In the next office action, the examiner declared that the 131 affidavit of applicant "has been considered but may not be utilized to antedate the patent to Mayland as both applicant and Mayland are claiming substantially the same invention." The examiner did not contest the sufficiency of the 131 affidavit showing—only the applicability of the affidavit. During subsequent office actions, all rejections were withdrawn except that claims 28, 31, 34-37, and 40 were rejected as anticipated by Mayland under 35 U.S.C. § 102. The examiner adhered to his previous position, saying:

The claims of Mayland are of the Jepson type, however, and refer to a regenerative process of removing carbon dioxide from gases utilizing a carbon solution wherein the improvement is the maintaining of, sic the carbonate solution with, sic a specified amount of an amine. It is apparent that the process recited in the claims must operate at some temperature and recourse to the specification indicates that a regenerative process to which the claimed improvement is directed is operated at a temperature of 220-240° F, which embraces applicant's claimed temperature of "at least 56° C" (132° F).

He also said that because Mayland and applicant are claiming the same invention "the rejection can not sic be overcome by a Rule 131 Affidavit but only through interference proceedings."

The Board's Decision

The board interpreted the rejection before it as follows:

The examiner's rejection is based on 35 U.S.C. § 102(g); and, inasmuch as appellant has antedated the reference by an affidavit under 37 CFR 1.131 to the apparent satisfaction of the examiner, the examiner relies only on the patent claims as prior art.

The board agreed with the examiner's position regarding claims 28, 31, and 40, thus:

Even though only the claims of Mayland are prior art, they cannot be read in a vacuum. To give meaning to and determine the scope of the preamble of Mayland's Jepson type claims, it is necessary to look at the patent specification. In this case it is clear that appellant has merely recited the specific limitations of that part of the Mayland process which are intended to be encompassed by the preamble of the Jepson claims. That is to say, the Mayland claims are clearly drawn to a process which is carried out at the elevated temperatures recited in appellant's claims.

The board disagreed with the examiner on the other claims on the basis that Mayland does not disclose the "splitstream" technique of absorption and regeneration.

Pursuant to 37 C.F.R. 1.196(b) the board made several new rejections—all based upon its conclusion of lack of support, in the specification as filed and in the parent applications, for the limitation that the absorption process be carried out "at an elevated temperature of at least about 56° C." All claims on appeal were rejected under 35 U.S.C. §§ 132 and 112, first paragraph, as drawn to new matter or an invention that is not fully described in the specification as filed. The board reasoned:

The temperature of 56° C is disclosed at page 8 of the specification merely as one temperature at which reaction kinetics of CO2 absorption were measured. It is questionable whether in any event this disclosure would support the limitation "at least about 56° C." In this case, since the 56° C reactions concerned not the amines per se, but amine borates, this disclosure does not relate to the invention of the claims before us.

The board further rejected claims 28, 31, and 40 under 35 U.S.C. § 102(b) for anticipation by either Mayland or the British patent, finding the limitation ("at least about 56° C.") to be unsupported by the disclosure of the parent applications. It declared that Mayland and the British patents were statutory bars, which cannot be sworn behind by a 131 affidavit, and that, in...