Ex parte ZISMAN - Page 9




               Appeal No. 97-3640                                                                                                  
               Application No. 08/406,272                                                                                          


               soda lime (Br. pages 8-9).  Furthermore, water can be present in the acid gas removal vessel 16 either              

               due to the NaOH itself which is only moisture-free if in a strictly dry environment such as a dry box; or,          

               as a result of the chemical reaction between the acid gas and the NaOH.  The presence of water in line              

               19 does not suggest a positive step of "adding water" to an olefin-containing gas or that positively                

               "adding water" to an olefin-containing gas would improve the CO  removal therefrom (Br. pages 9-10).                
                                                                                  2                                                
               Moreover, the claimed process is not limited to cracked gases, but can be used with substantially pure              

               stored olefin (Br. page 10).  Finally, because the combined disclosure of Skraba and Strack does not                

               suggest adding water to an olefin-containing fluid to improve CO  removal, the references are irrelevant            
                                                                                  2                                                
               to the conditions recited in claims 9-11 and 16-19 which parameters provide exceptional results in CO2              

               removal (Br. pages 10-11).                                                                                          

                       Notably, the examiner does not rely on Strack for teaching adding water to a fluid to form a                

               water-containing fluid comprising at least one C -C  olefin and CO .  We agree with appellant that2   6              2                                              
               Strack does not cure the deficiency of Skraba, i.e., Strack does not teach a positive step of "adding"              

               water to an olefin-containing fluid, regardless of dehydration system 13.  Since neither Skraba nor                 

               Strack disclose or suggest the first step of the claimed invention, i.e., of adding water to a fluid to form a      

               water-containing fluid comprising at least one C -C  olefin and CO , the examiner has failed to establish2   6              2                                              
               a prima facie case of obviousness in regard to the subject matter as a whole.  35 U.S.C. § 103(a).                  

               With regard to the discussions of the claimed invention's applicability to substantially pure stored olefin         


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