Application of Habet M. Khelghatian
364 F.2d 870
C.C.P.A.
1966
Check Treatment

*1 including up to and in concentrations 53 CCPA M-g./ml.” [Emphasis added.] Application of Habet M. KHELGHATIAN. greater states second affidavit Appeal Patent No. 7606. compounds were symbol means “the than United States Court Customs give complete e., in- active, not i. did Appeals. and Patent highest hibition, concentration at Aug. 4, 1966. I find this do not statement tested.” contrary statements

reference. stated, it all affidavits If this they support apparent once at However, Office. of the Patent affi- second there sentence greater states, than davit imply symbol not mean “doеs partially question

compounds in were highest test- concentration

active at the [Emphasis

ed.” added.] sentence is clear that the above

It is strength upon appellant’s case Martin, J., dissented. appel- to me that or falls. seems stands It by introducing taken the lant has the reference teaches against any of the test no inhibition greater organisms forth set symbol employed. than dealing are here symbol con- the above to what fact ordinary

veys in the art. to one skill only affi- has offered

While very proof im- davit establish this case,

portant fact, vital Patent from the record that find

I continuously avoided Office has of the fact averred

sideration applicant fails to

affidavit. Where an respond to a fact averred accepted Office, fact as C., Hatfield, Washington, D. Dos T. determination under established .our Pa., Hess, Philadelphia, J. Edward Boe, re F.2d section 103. See In appellee. - -; Diamond, C.C.P.A. Joseph Schimmel, Washington, D. C. - C.C.P.A. -. Martin, Washington, C., (Raymond D. E. counsel), the Commissioner I facts of record Here Patents. the reference teaches ‍​‌​‌‌​​​‌​​​‌​‌‌​​‌​‌​​​​​​‌​‌​​​‌​‌​‌​‌‌‌​‌‌​​‌‍one no inhibition where- skill RICH, Acting Judge, Before Chief symbol greater I is used. ever the ALMOND, MARTIN, SMITH, and As- processes conclude that claimed must Judges. sociate compositions within are non-obvious Acting Judge. RICH, meaning For Chief section I the deci- reasons would reverse appeal above is from the unanimous de- This Ap- Board the Patent Office cision sion of the board.

871 peals1 affirming rejec- ppm poly- the exаminer’s 34-167 COS. 3 Claim recites a process process 1-3, propy- tion of claims and merization in which application 52,211, No. lene is first serial filed treated with soda-lime August polymerized. for Re- move for “Process COS and is then Normally moving Carbonyl Sulfide from Claim recites a in which a Hydrocarbons.” normally gaseous hydrocar- Gaseous No claim is al- mixture of lowed. bons is first treated with MEA to re- propy- move some of the COS after which The invention relates the removal of separated lene is from the mixture and carbonyl (COS) normally sulfide separated propylеne is then treated gaseous hydrocarbons, from re- obtained liquid phase with soda-lime to remove fining cracking processes and em- and remaining therefrom. COS Claim ployed appli- in numerous conventional liquefied pro- recites a pylene having in impurity frequently cations. COS is an specified COS content hydrocarbons found such and often has is treated with soda-lime to reduce the as, use, a deleterious effect on their for ppm. COS content to 0-5 example, polymerization propy- in the polypropylene COS, lene present references are: poisons amounts, even in small 3,000,988 Sept. Karchmer et al. polymerization catalyst. Fleming 2,959,627 etal. Nov. Appellant invented a for method low- 2,301,588 Schulze et al. Nov. ering hy- the COS concentration-in such ppm drocarbons to levels less than 0.5 filing The U. S. dates of the first two (parts million) per by treating hydro- appellant’s filing antedate date. soda-lime, carbons in with Karchmer al. et disclose the removal of specification defined in the “lime as gases containing COS from same hydrox- which has added thereto sodium tacting gas soda-lime, which, * * with ac- ide “lime” is The term said cording very good patentees, to the “is a quicklime lime, hydrated to include and absorption Light, material.” olefinic being calcining product the former gases catalytic obtained from the crack- limestone, e., magne- i. calcium oxide and ing petroleum, particularly ethylene, of disclosed, primarily, being sium oxide dry powder the latter and it is stated that by treating quick- obtained purified ethylene is such as to be usable enough satisfy lime with water to its production polyethylene. in the erably Pref- affinity hydro- chemical therefor. The gas pretreated to remove may carbons be “scrubbed” with mono- gases by scrubbing, various acidic for (MEA) solution, prior ethanolamine example aqueous with an solution of contacting soda-lime, with to remove “the hydroxide, sodium and to remove mois- gases, H2S, C02, part (from acid etc. and ture, example gas passing 90%) carbonyl sulfide.” 20% through a bed of activated alumina. Claim 1 reads: Karchmer al. et make no us- mention of purify lique- ing 1. Process [sic] soda-lime to remove COS from mate- normally gaseous hydrocarbons fied liquid phase. rials containing carbоnyl sulfide com- Fleming “improved et disclose an prises contacting liquid hydrocar- purifying method for olefins [obtained bons with soda-lime. pyrolyzing refinery gas, kerosene, dependent gas Claims 2 and 7 are oil, claim which are contaminated etc.] preferred and highly define compounds embodiments of the with unsaturated defined, being invention there compounds patentees claim 2 of sulfur.” The propylene limited to selectively hydrogenate acety- claim 7 first hydrocarbons containing limited to compounds gas from lenic and diolefinic Consisting Magil Lidoff, writing opinion, Examiners-in-Chief the latter Act ing Examiner-in-Chief Behrens. ing converting appreciably the fluid an adsorbent material mixtures without organic impregnated as with an base such monoolefins preferred butylene, pass In a treated monoethanolamine. and then impreg- organic conversion embodiment adsorbent is also “an sulfur over catalyst,” specification nated with lead salt addition disclosed say: patentees comprising oxides or sulfides monoethanolamine. “the *3 copper separately in admix- or or iron usually prefer to in treat We metals of ture with the oxides the reagent since the volume of group of 6th the the left hand of the side rates, say quired for 0.5 nominal flow table,” chromium, periodic namely, per per to 5 hour volume of volumes molybdenum, tungsten, etc., “to selec- reagent However, is not excessive. tively carbonyl sulfide to convert the normally vapor phase treating or again hydrogen without sub- sulfide” gaseous hydrocarbons satisfactory stantially destroying the molecular low provision if of the made the size desirability weight The monoolefins. reagent bed cor- to allow contact times removing ethylene both COS from responding linear velocities propylene discussed, it also per five under feet minute. pointed out that: would it be The issue therefore is: carbonyl problem normally hydro- gaseous of removal of obvious treat liquid phase purifica- soda-lime to carbons with sulfide was not serious the prior remove COS therefrom when the ethylene production of tion of hydro- art shows treatment of such carbonyl polyethylene sulfide since vapor phase for carbons with soda-lime was removed fractiоn in with C3 purpose prior art also same ethylene procedure. concentration hydrocar- shows the treatment such carbonyl Both sulfide and bons in both with boiling point have a of about -50°C. type treating agent MEA for same by which renders removal fractionation purpose ? essentially impossible. propy- Thus separated pyrolysis mixtures lene agreement appears There to be by procedures will conventional con- proper parties that essential to carbonyl high percentages tain sul- resolution this issue is a consideration to a reduced fide which must be including evidence, an of all record p.p.m. centration about 132. filed under Rule Such production for in the suitable use for in this court several has years, the law been plastics. regardless of whether and that any patentability exists “doubt” as to Schulze et al. the removal of disclose upon hydrocarbon examination of the COS from fluids such e.2 purports by normally gaseous hydrocarbons The aforesaid affidavit treat- alon having person Crounse, See, example, to a In re patent CCPA -; pertinent art, 881, Legator, skill in thеn F.2d In re affidavits, granted -; if In even 352 F.2d DeMontmollin, 53 CCPA should re disclaimers, like and the are terminal 344 F.2d 52 CCPA applicant, 1287; Graf, presented since F.2d In re change 1206; papers Lohr, what is obvious so cannot re 317 F.2d 50 CCPA 548; may Papesch, unobvious and therefore become USPQ Supreme patentable 1084; invention. The 50 CCPA cases however, Court, points com- out there cited. success, long note, regard, felt but unsolved mercial an address this may others, etc., needs, failure of the Commissioner of Patents before the relevancy or indicia obviousness Patent Professional Staff оf the they unobviousness, 30, 1966, of secon- but Office MArch 825 O.G. 825 may importance. dary (April 1966), These factors it was said: wherein * * * resolving helpful if the examiner is satisfied clearly in doubt- unobviousness that the claimed invention is ob- obviousness teachings cases, since in each case vious view of the ful

g73 to establish as fact that treat- (liquid Run B phase) only after about hydrocarbons ment of operation. hours’ taught gas phase rather than the Regarding work, Duff, affiant gives “vastly superior et al. Karchmer engineer chemical supervi- under whose hydro- results” in treatment of the same experiments sion the performed were “essentially carbons. It ‍​‌​‌‌​​​‌​​​‌​‌‌​​‌​‌​​​​​​‌​‌​​​‌​‌​‌​‌‌‌​‌‌​​‌‍is admitted that said: entire case of is based on * ** affidavit,” and so it to us. We seems these runs primarily (1) are concerned whether clearly unexpectedly demonstrates the superior shown these results have been superior carbonyl sulfide removal effi- (2) they so, be un- whether ciency liquid phase process when expected. compared vapor phase process. *4 compari- What the affidavit shows opinion In his those skilled in the experiments, of son two in each of which surprised art been charge consisting propylene a containing stock of liquid phase operation that ppm passed COS was significantly more than efficient through consisting a reactor of a two- phase vapor operation, particularly, pipe, inch diameter feet steel three propylene charged when the amount of length, containing pounds 3.1 of com- greater was somewhat Vapor mercial soda-lime. “Run A— phase (4.8 liquid #/hr./#) run charge Operation,” Phase passed through stock was phase (4.4 vapor than for thе run tempera- the reactor at a #/hr./#). applicant’s The fact that 15°F., pressure psig, ture of a of 50 and liquid phase process is almost ten pounds propylene per a rate of 4.4 hour per pound soda-lime; in “Run B— than twelve times more efficient Liquid Operation,” charge Phase vapor phase process is art strik- temperature °F., stock was at a of ing opera- proof that such pressure psig, passed of 140 and was merely a matter choice tion not through the reactor at rate 4.8 one available to skilled pounds propylene per per pound hour Affiant also states claim- periodical- soda-lime. The effluents were subject application ed in the ly analyzed used in content, for COS ex- plained propylene purification plant having poly- affidavit, that for capacity 120,000,000 puri- pounds polymers merization to solid propylene per year that, the maximum fied in his tolerable COS content is ppm^ opinion, “break-through” superior “similar so-called results would —a normally charging value. This value be found was reached in Run when other (gas phase) gasеous hydrocarbons phase A liquid after a more little operation applicant’s process.” one hour’s and was reached in question pertinent, “clearly examiner makes the invention obvious.” way approach must resolve this an one Such proverbial is reminiscent the other to Ms “don’t bother me [Second with the satisfaction. emphasis facts, my up” mind method of ours.] is made place has, think, We are familiar with the views of the decision and we Supreme application Court there referred to as ex- of 35 103. We § U.S.C. pressed Co., v. Graham John remain of the view Deere therefore 1, requires evidence, 383 U.S. S.Ct. L.Ed.2d law consideration of all Adams, bearing ques- properly submitted, and United v. States 383 U.S. on the 86 S.Ct. 15 L.Ed.2d 572. In our tion obviousness. nothing Further, view the Court do said at all not understand the Com- cases,” way attempt any about “doubtful nor to relate terminal missioner’s rejections suggested any record based on section evidence should disclaimers probative weight See, regard, full be accorded its in this Bowers particular situations, Orr, as where CCPA-. the examiner “is satisfied” using against background opposed vapor liquid It is that the merely examiner, phase, applicant in his answer to obtained board, result, namely, brief before the said: removal carbonyl sulfide. To obtain even an Applicant argues unexpected re- de- is a matter of using phase liquid re- contact sult ferring gree not a in kind. difference an affidavit under Rule The essence of the board’s is: 16) (Paper to show a No. submitted disagree vapor comparison Examin- While we with the part er the Rule 132 This is in and do consider that contact. affidavit], produced pages appli- 14 of affidavits on [sic: 13 and presented, appar- showing an cant’s basis demonstrate brief. is not Such improved result, convincing patentability ent vapor phase unexpected is not an one in view of over contact. It merely anticipated be- the differences to be discloses that over extended period vapor liquid-phase opera- time, liquid phase tween contact is through-put. As is tions at the same efficient than However, applicant’s (page tact. evidenced Schulze et paragraph) claims are length last silent column linear veloc- as to of time of con- apparatus any advantage using must be tact so liquid ities altered vapor- equivalent appear obtain phase operation results in over does not *5 compared in the as with claims. liquid-phase operation. compara- It is further noted that the agree posi- Examiner’s with the merely comparison tive results are expressed except tion his Answer in single temperature pressure of a and interpretation for his of the affidavit single temperature with another and possibly above, with results noted and pressure. To from such a conclude language expres- in the choice of alleged showing unexpected re- that dependent * * * try”. In sion “obvious sults are in on difference opinion our be would obvious to phase, many which different includes substitute, in Karchmer al. va- et temperature pressure variations, and por-phase hydro- contact olefinic appear would to be a stretch induc- soda-lime, with the known carbons Upon viewing tive conclusions. engineering liquid-phase alternative (columns al. Karchmer et operation. substitution with the This 4) it is seen C.O.S. concentrations apparatus requisite alteration of gas phase in the obtained process parameters equivalent to obtain vary p.p.m. p.p.m., from 0.2 to 74.8 clearly taught above- results is in the that in ei- former less than paragraph in indicated Schulze et phase applicant’s ther affidavit interpretation We think reasonable tests. position appellant’s is that the board’s Notwithstanding ap- fact that be does establish his plicant may improved obtain an effi- such more than that of the efficient ciency using particulаr conditions improved but such an showing patentability cannot lend reading expected would have from a been present a more claims for basic al. disclosure and of the Schulze et reason. Schulze et al. disclose put appellant in therefore does not phase fact is known contact on the favorable systems. carbonyl in sulfide removal n patentability. Accordingly, it would be obvious try has in the Karch- While much theoretical discussion contact carbonyl presented, in first time mer et al. sulfide removal been here, true process, about the three briefs filed so that matter what result occurring phenomenon thereby, such a feature nature was obtained “reactor”; or patentable. effect within the about the It is noted changes resulting pertaining in physi- thereon [those effects to] claims etc.; temperature, pressure, through-put, arrangements. cal structures or phenomenon has about what this been agree We therefore that: appellant’s specification, in labeled in form; original results achieved normally gase- both its and amended soda-lime phеnomena treatment of about the nature curring oc- hydrocarbons ous processes; in the about opposed property necessity, it, for the num- lack appellant’s process is to ber of variations conditions between determining reported considered in Run A and Run B in the affi- obvious- davit; ness of significance claimed invention. about Papesch, B variations conditions between Run (the liquid operation) and those example reported specifica- in an support appel- of its arguments tion, we find on most of lant’s would be points help drawing these little view of “the differences antici- clusions about issues discussed. pated liquid-phase op- What we have able to been conclude through-put,” erations at the same however, discussion, ap- is that what pointed passage board in Schulze pellant compare attempted affi- his et al. which we have set out above in davit was the effect on liquid removal of COS discussing that reference. This is all vapor phase, vs. and that what he provides, and, the evidence the board hoped tempera- had to do to maintain diligent after a search of the record and ture, parame- through-put, and all other briefs, all it is the examiner and except pressure constant, ters the varia- provided. solicitor-have pressure being necessary tion in and re- While the et Schulze al. disclosure un- sponsible phase. In- the difference in says doubtedly velocity linear stead, because of “unforeseen mechanical *6 apparatus going must altered in equipment in limitations the which liquid vapor phase operation, pre- to experiments performed,” appel- the were sumably versa, equivalent vice to obtain says, temperature through-put lant results, says. we think is that all that it were not held the ef- constant. Whether suggestion We no find disclosure or that fect of these variations to decrease liquid phase operation give more efficiency rather increase the That, however, COS removal. efficient liquid phase operation, ‍​‌​‌‌​​​‌​​​‌​‌‌​​‌​‌​​​​​​‌​‌​​​‌​‌​‌​‌‌‌​‌‌​​‌‍by as contended appellant is what claims to found. appellant, point it we feel unneces- teaching another, While a that albeit re- sary to decide sincе we have not been lated, process can be carried out both persuaded by argu- the Office suggest liquid phases may the improved apparent that “an ments sult,” possibility carrying out the Karchmer quote board, the does not fact process phase, making liquid et al. we, board, exist. Thus like believe the alterations, certain important not tantamount

the consideration is whether improvement efficiency such an was to to a disclosure of to make how those alter- expected. We it not. think was and, importantly, ations that a sub- stantially efficiency will re- recently Neely, As in In we said re 361 F.2d 255, 53 CCPA-: sult. appealed claims We have the reli- are all method considered solicitor’s claims, but, upon Leum, so far as the of ob- ance 34 issue re F.2d concerned, 762; parte Appeal viousness the considera- CCPA and Ex No. applicable 13,231 proposition tions no different that because upon opinion published 3. The board also relied both these board was not and was cases, upon apparently appellant Ex the examiner relied unavailable ex- parte only. ceрt Appeal 13,231 appearing form No. That in its abstracted Adams, vapor a ed U.S. 86 S.Ct. use in known States v. “the phase process the section is well known to chem- The further command type as engineer,” 103 is of one that consider the invention requires ical a disclosure we unpatentable. a whole. This a factual assess- renders the other existing prob- arguments However, factors un- ment of such as the we those persuasive. the is more lem in art towards which inven- Here the invention directed; change respective tion in issue is than mere from the appli- liquid phase; contributions the art also includes great- prob- discovery doing, cant lem; of that so a much towards solution a consideration of the differences er is obtained. prior and the invention unpersuasive the solic- We also find issue; and, finally, a determination “is itor’s the affidavit contention one would have been obvious to what weight entitled be- to no whatsoever” skill in the art at time unexpected cause it to an is not directed appellant’s invention. orig- property of the “within ambit appellant the factual disclosure,” Herr, Here hаs asserted quoting inal from In re facing art; aspects problem F.2d CCPA has solution for opinion quoted disclosed factual had in turn the board. problem evidence and has submitted support Herr not to an think for appears dif- (1) facts from which it that the affirmance for two reasons: what ferences art and the between the was said was not produced improved re- only invention claimed weight, was entitled but magnitude raises advantage sults of a serious if the is not disclosed in the application basis for ex- doubts as to factual appellant in a is “not favor- finding urge Con- aminer’s obviousness. able it as basis sidering the record a whole it seems (emphasis ours), the allowance of claims” citing me affirmed Lundberg, examiner’s (2) of factual 838; the board must for want fail here think the affi- hindsight support. after Viewed with davit is directed that which “would in- inherently orig- disclosure it seems obvious flow” from what was inally interpreta- substitute claimed disclosed, deed to op- phase operation put Zenitz, tion we on Herr in In re appealed eration of the F.2d 52 CCPA 746. however, claims, are claims to Since we find the necessarily and thus involve morе than suggested has found not been liquid substitution of mere *7 by prior the we hold the claims to vapor phase operation for a in an other- patentable. Carabateas, be In re process. Operational wise old differ- 998, 53 —. prior para- ences over the art new The of the is decision board reversed. clearly required operation meters of process appellant's phase

Reversed. before is operational. process unitary concept A ais Judge (concurring). SMITH, type does of not lend itself to the dissec- lеgal The conclusion of obviousness analysis employed by tional here the ex- required by 35 U.S.C. must be § aminer and the board. Cochrane v.

predicated on factual considerations. Deener, 780, 788, 94 U.S. L.Ed. 139 Co., ‍​‌​‌‌​​​‌​​​‌​‌‌​​‌​‌​​​​​​‌​‌​​​‌​‌​‌​‌‌‌​‌‌​​‌‍Graham John Deere v. U.S. (1876), Bradley pointed Mr. Justice out: among 86 S.Ct. 684. Included process A is mode of considerations are the results which are a treatment produce given by in issue. of certain to achieved the invention Unit- materials since, 1948). precedent (January, as we the We find it view case be- JPOS dispute us, by unnecessary over the fore our decision is cоntrolled law resolve a relying propriety case court. of acts, act, phase operation produce or series of result. It is would the results subject appellant performed upon the matter has shown to flow therefrom. and reduced to differ- transferred I do not consider that the examiner has thing. ent state or discharged obligations imposed here the by on the Patent Office the Deere case. unitary The nature of the claimed legal The conclusionof obviousness under process appear to does not have been 35 U.S.C. 103 must be based on factual § by considered examiner the here considerations which I find to be miss- Instead, board. of the rationale ing present from the record. appealed appears simply decision one that it have been obvious for Judge MARTIN, (dissenting). ordinary of skill this art substitute vapor key The reaction for the here is whether the efficiency, reaction of the The I as- considering arguendo by affidavit, error here in so sume is shown process considering expected.1 majority is of the old error is of not; separate steps prоcess of rather the view I that it was think it was considering process teaching than as a whole. from the of Schulze et al. that: give To here effect to mandate of ** * gas phase treating vapor of 35 U.S.C. we must start awith § normally gaseous hydrocarbons is sat- unitary process, which the invention isfactory provision is made in the whole, as a and then consider the factual reagent size contact bed allow significance portions the claimed corresponding times to linear they thereof to the “effect” contribute per velocities under minutе. five feet which the obviousness of the [Emphasis added] appellant is to be measured. Thus when proof alleged submitted appel- “effect” result and related efficiency: e., lant it to differences here is one i. savings time, the claimed processes, and the say, or as Schulze et my I required view, think much more is “contact times”. the above quoted passage of the examiner reiteration Schulze et al. teaches subjective opinion concerning adjust his that one must size though reagent obviousness of the invention even COS bed so that the linear va- por velocity through stated terms of criticism of the aver- not over feet per ments in the affidavit. thisAt level both minute. This is in to the contrast applicant requirement examiner should be .5 vol- development liquid propylene per concerned with per on umes of facts hour legal reagent. Regardless which the ultimate conclusion volume of of the grounded. figures obviousness can be exact Here one skill position office fails because examiner in the art could determine on the basis did sup- relationships taught come forward explicitly factual port al., for his going after had Schulze et it is clear that in factually supported contrary position. say liquid propylene per .5 volumes sustained, per reagent If the office to be hour volume of *8 challenged supported when corresponding it must be volume of the 15 liquid data factual from the technical volume literature at a rate such that the gas passes through long or references which would have made ob- five foot bed minute, reagent vious to one of skill in in no less than one appellant’s invention, required. at the timе bed will be That means change vapor reagent, amount of same “1 vol- key question 1. That is the as noted ed combination of references majority, and it is founded on the view render the claimed obvious within showing meaning that without a re- of 35 § U.S.C. 103. suits, expect or if the results were to be used, above, example is to ume” correspond- longer, and times will ingly efficiency less. Thus, the exact I do not view while shown,

efficiency alleged vs 12 hrs. to be necessarily predictable, hr., predictability absolute I not think such do required by law, im- con

to be provement is to teachings in from the ‍​‌​‌‌​​​‌​​​‌​‌‌​​‌​‌​​​​​​‌​‌​​​‌​‌​‌​‌‌‌​‌‌​​‌‍convincing I note there is also that ppm

argument the resultant value any im-

of COS left

provement Karchmer et in view the

(gas process) showing ppm. .2

problem propy- removal COS Fleming. recognized by lene was I

Thus would affirm.

53 CCPA HURWITZ, Appellant, Melvin D.

v.

George POON, Appellee. YIM SHIU Appeal

Patent No. 7537.

United States Court Customs Appeals.

Aug.