Ex Parte 7217368 et al

Board of Patent Appeals and Interferences

Mar 15, 2012

95001147 (B.P.A.I. Mar. 15, 2012)

UNITED STATES PATENT AND TRADEMARKOFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,147 02/18/2009 7217368 12662-0000003 1187
7590 03/15/2012
Richard R. Michaud
The Michaud-Duffy Group LLP
306 Industrial Park Road
Suite 206
Middletown, CT 06457
EXAMINER
JASTRZAB, KRISANNE MARIE
ART UNIT PAPER NUMBER
3991
MAIL DATE DELIVERY MODE
03/15/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________________

EVAPCO, INC.
Requester

v.

CLEARWATER SYSTEMS CORPORATION
Patent Owner and Appellant
____________________

Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B21
Technology Center 3900
____________________

Decided:
____________________

Before: RICHARD M. LEBOVITZ, JEFFREY B. ROBERTSON, and
RAE LYNN P. GUEST, Administrative Patent Judges.

GUEST, Administrative Patent Judge.

DECISION ON APPEAL

1 The patent under reexamination (hereinafter the “‘368 patent”) issued
to John W. Lane on May 15, 2007, from application 10/308,647, filed
December 3, 2002.
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

2
I. STATEMENT OF CASE
Patent Owner Clearwater Systems Corporation (“Clearwater”)2
appeals under 35 U.S.C. §§ 134(b) and 315(a) the Examiner’s decision to
reject claims 1-17 under 35 U.S.C. § 103(a) as unpatentable over Pier (US
5,144,571, issued May 19, 1992) in view of Crewson (US 6,063,267, issued
May 16, 2000).3 Third-Party Requester, Evapco, Inc. (“Evapco”),4 has filed
no Briefs in connection with this Appeal. We have jurisdiction under 35
U.S.C. §§ 134(b) and 315(a).
We AFFIRM.
The Invention
The ‘368 patent relates to the treatment of water or other liquids to
remove solids and other harmful contaminants and particulates, including
dissolved minerals and organic matter (the ‘368 patent, 1:20-41 and 2:55-
61). The ‘368 Patent discloses that conventional centrifugal separators and
hydrocyclones, while able to remove particles of only 40 microns or larger,
are not capable of removing micronic pollutants, as small as 20 microns (id.,

2 See Patent Assignment Abstract of Title, which was entered into the
record of this proceeding as “Title Report” on February 24, 2009 (indicating
an assignment recorded on December 3, 2002 from the inventor to
Clearwater Systems, LLC (Reel/Frame 013547/0944) and an assignment
recorded on January 27, 2004 from Clearwater Systems, LLC to Clearwater
Systems Corp. (Reel/Frame 014293/0260).

3 See Clearwater’s Appeal Brief filed September 21, 2010 (“App. Br.”)
and Rebuttal Brief filed July 26, 2011 (“Rebuttal Br.”)

4 See “REQUEST FOR INTER PARTES REEXAMINATION” filed
June 8, 2010.
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

3
1:38-51). The ‘368 Patent summarizes its disclosed invention as follows
(id., Abstract):
An apparatus and method for treating dirty water or other
liquids containing particles of varying size includes a magnetic
treatment unit and a centrifugal separator through which the
liquid flows as a stream in sequence. The magnetic treatment
unit causes very small sized particles to agglomerate, nucleate
or otherwise to be amassed into larger particles which are then
more easily separated by the centrifugal separator.
In particular, the ‘368 Patent discloses that surface charges and/or hydration
layers on colloidal and/or suspended particles of less than 45 micron size are
changed, with the result that these small particles coagulate into large
particles, which are more easily removed by conventional centrifugal
separation (id., 2:61-66 and 3:15-19). The process of the ‘368 patent
preferably employs an oscillating magnetic flux having a high frequency
with the range of 10kHz to 100kHz and which appears in time spaced bursts
of up to 150 bursts per second (id., 2:43-47).
The ‘368 patent includes claims 1-17, of which claims 1, 5 and 16 are
independent claims (App. Br. 18-21, Claims App’x.). Claim 1, reproduced
below, is illustrative of the claimed subject matter:
1. A method for treating a liquid having solid
particulate contaminants suspended therein to remove solid
particulate contaminants within a size range including very
small sizes, said method comprising the steps of:
providing an input stream of said liquid having solid
particulate contaminants suspended therein;
moving said liquid having solid particulate contaminants
suspended therein from said input stream through a treatment
zone;
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

4
creating coagulated particles by subjecting said liquid
having solid particulate contaminants suspended therein to a
high frequency magnetic flux as said liquid having solid
particulate contaminants suspended therein moves through said
treatment zone, thereby causing at least a portion of said solid
particulate contaminants to agglomerate into said coagulated
particles; and
moving said liquid with all of said coagulated particles
and all of any remaining solid particulate contaminants still
being suspended in the liquid directly through a centrifugal
separator to remove said coagulated particles and said
remaining solid particulate contaminants from said liquid.
(id. at 18). Claims 5 is directed to “[a]n apparatus for liquid treatment,” but
further recite that the magnetic treatment unit “selectively subjects said
material suspended in said liquid with high frequency magnetic flux, said
high frequency magnetic flux having a frequency for changing at least one
of surface charges and hydration layers on said material in said liquid to
form agglomerations of coagulated particles which are then separated from
said liquid in said centrifugal separator” (id. at 19). Claim 16 includes
similar claim language as claim 5 (id. at 21).
Clearwater’s arguments are initially directed to all of the rejected
claims as a group (App. Br. 10-16). While Clearwater also presents separate
headings directed to dependent claims 2 and 7, as a group, and dependent
claims 4, 8 and 9, as a group, Clearwater relies on the discussion with
respect to the independent claims in order to argue that the dependent claims
are patentable (App. Br. 16). According, we decide the issues in this Appeal
based on representative claim 1. See 37 C.F.R. § 41.37(c)(1)(vii).
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

5
II. DISPOSITIVE ISSUE ON APPEAL
As stated above, all the claims stand rejected under 35 U.S.C. § 103(a)
as obvious over Pier in view of Crewson. Pier and Crewson are both
directed to liquid treatment methods using an alternating magnetic force
field cell which affects dissolved mineral valence electrons and causes the
dissolved minerals to lose their ability to form hard scale (Pier, 5:21-28;
Crewson, 1:5-32). Pier teaches that the minerals in streams of fluid are
rendered into a soft mud which can easily be removed by blowdown or
flushing (Pier, 1:59-62).
The Examiner concluded that it would have been obvious for one of
ordinary skill in the art to use the particular high frequency magnetic flux
treatment structure taught by Crewson as the magnetic descaling unit 40 in
the water treatment system taught by Pier because Crewson discloses using a
“ringing flux [i.e., an excitable coil surrounding the path of the flowing
liquid] which has a greater effect on liquids than prior electromagnetic
apparatuses” (RAN5 3-4).
Clearwater does not dispute that the skilled artisan would have had a
reason to combine the teachings of Pier and Crewson in the advantages to
scale treatment identified by the Examiner (see generally App. Br.). Rather,
Clearwater contends that the claimed invention would not have been obvious
because neither Pier nor Crewson recognize that the high frequency
magnetic flux of Crewson’s electromagnetic apparatus would have affected
the surface charge and/or the hydration layers of colloidal and suspended
material in the liquid, resulting in the agglomeration of particles for

5 “RAN” refers to the Right of Appeal Notice mailed June 23, 2010.
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

6
improved centrifugal separation of particles smaller than 40 microns (App.
Br. 10-11; Rebuttal Br. 11-12). Clearwater also contends that, since this
result is not recognized in the art, the removal of suspended particles of less
than 40 microns in size, as evinced by the data in Table 1 of the ‘368 patent,
is an unexpected and nonobvious result (App. Br. 15-16; Rebuttal Br. 12).
The Examiner determined that utilizing the high frequency system of
Crewson in the process taught by Pier “would intrinsically provide for the
removal of smaller particles through coagulation and collection by the
centrifugal separator, including those 40 microns and less” and that this
result would not have been unexpected (RAN 6-7). The Examiner relies on
the teachings of two references, Morse ‘878 (US 6,193,878 B1, issued
February 27, 2001) and Morse ‘342 (US 2001/0035342 A1, published
November 1, 2001), as evidence of the intrinsic effect of the use of the high
frequency magnetic flux disclosed by Crewson and as evidence that this
result was well known in the art, and thus not unexpected (RAN 7-8).
Accordingly, the dispositive issue on Appeal is:
Does the evidence establish that it would have been obvious to one of
ordinary skill in the art at the time of the invention that the combined high
frequency magnetic method and apparatus of Pier and Crewson would have
caused changes in at least one of the surface charge and hydration layers of
very small suspended particles causing them to agglomerate into coagulated
particles? We answer this question in the affirmative.
III. DISCUSSION
We find that the Examiner has provided a sufficient reason why one of
ordinary skill would have used the high frequency magnetic flux apparatus
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

7
of Crewson as the magnetic descaling apparatus in the process taught by
Pier, namely, in order to provide a more efficient and effective magnetic
treatment (RAN 4 and 6). See KSR Int'l Co. v. Teleflex Inc., 550 U.S. 398,
419-20 (2007) (“In determining whether the subject matter of a patent claim
is obvious, neither the particular motivation nor the avowed purpose of the
patentee controls. … [A]ny need or problem known in the field of endeavor
at the time of invention and addressed by the patent can provide a reason for
combining the elements in the manner claimed.”).
Contrary to Clearwater’s arguments, the Examiner has provided
sufficient evidence and technical reasoning to support the position that the
high frequency magnetic flux taught by Crewson would also have caused the
agglomeration of colloidal particles due to changes in surface and hydration
properties for easier removal by the centrifugal separator taught by Pier.
Specifically, the Examiner points to Morse ‘878 and Morse ‘342 as evidence
that the effect of high frequency magnetic flux on colloidal suspended
particles was well known in the art. For example, Morse ‘878 discloses the
following:
Conventional non-chemical techniques typically focus on ways
of directly affecting constituents suspended in the water. By
directly affecting the constituents, such as particles or other
forms of contaminants, the colloidal relationships between
respective particles may be altered. This often causes an overall
coagulation, agglomeration or other condition allowing for the
straightforward separation of the constituents from the water.
(Morse ‘878, 1:23-30; see also 2:9-20). The “conventional non-chemical
techniques” include subjecting the material to magnetic or electromagnetic
forces (id., 1:54-2:20). Morse ‘878 also teaches that variable
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

8
electromagnetic energy specifically affects the “hydration forces in a
solution stream to control intermolecular and surface forces acting on
constituents in the solution” (id., 2:55-62).
Likewise, Morse ‘342 is directed to “systems for delivering
electromagnetic energy in the form of magnetic and electric fields into a
colloidal suspension, i.e., a solution for modifying its characteristics” (Morse
‘342, ¶ [0045]). Specifically, Morse ‘342 discloses the following
wastewater treatment process:
The energy source, e.g., the delivery apparatus 322, stimulates
the primary solution 314 using a magnetic, electromagnetic, or
electric field, visible or invisible broadband or monochromatic
light or any other energy source. The primary solution 314 is
thus placed into an altered energy state, and is transferred I [sic]
a pump 332 or other means through closed loop pipe 324,
tubing, etc. into the treatment pond/ sump/stream 316. Energy
emanating from the primary solution 314 is then radiated into
the secondary solution 318, altering the physical characteristics
of the secondary solution 318, i.e., pH, conductivity, zeta
potential, viscosity, surface tension, hydration force or any
other characteristic of the secondary solution 318 to effect
precipitation, flocculation or agglomeration of particles
suspended in the wastewater effluent, allowing them to be
sedimented, skimmed or filtered from the solution.
(Id., ¶ [0121]).
Thus, Clearwater’s argument that agglomeration of particles due to
changes in surface charge and hydration layers was not recognized and
unexpected is contrary to the evidence of record.
We are not persuaded by Clearwater’s arguments that these references
are non-analogous art because Morse ‘878 and Morse ‘342 are directed to
the indirect treatment of a solution, in that a secondary fluid is first subjected
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

9
to the magnetic or electric energy which is then transferred to the primary
solution being treated, or because Morse ‘342 is directed to a small scale,
batch treatment process (App. Br. 13-14). The Examiner is not asserting the
relevance of the particular structures or processes disclosed therein into the
rejection. Rather, the Examiner relies on these teachings only as evidence of
what the skilled artisan would have understood about the effects of
electromagnetic flux of the type taught by Crewson on suspended particles,
namely, a change in surface and hydration properties that result in
agglomeration (Ans. 7).
We are also unconvinced by Clearwater’s arguments that the Morse
references fail to create a nexus between high frequency magnetic flux and
the agglomeration of solid particle contaminants into coagulated particles
(Rebuttal Br. 16-17). To the extent that Clearwater is suggesting a
distinction between “magnetic and electromagnetic energy” and “magnetic
flux,” we have not been directed to sufficient evidence of record to suggest
the magnetic and electromagnetic energy sources of Morse ‘878 or Morse
‘342 do not create a magnetic field having a magnetic flux. Accordingly, we
find such distinction in terms to be of no moment when considering the
known effect of applying magnetic or electromagnetic energy to suspended
particles. Moreover, the Morse references teach that the claimed results are
known to occur with a variety of energy sources, and particularly with
magnetic and electromagnetic energy. Thus, it was reasonable for the
Examiner to conclude that one of ordinary skill in the art would have
expected an increase in agglomeration with an increase in the frequency of
magnetic flux.
Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

10
Further, we are not persuaded that Table 1 (cols. 3-4) of the ‘368
patent provides sufficient evidence of unexpected results. Table 1
demonstrates improved particle separation using high frequency magnetic
flux and centrifugal separation compared only to using centrifugal separation
alone (‘368 patent, col. 3-4, Table 1). However, magnetic flux treatment
was taught by Pier and Crewson. The data is insufficient to show any
improvement in separation over the teachings of Pier which teach using
magnetic flux in addition to centrifugal separation. In re Baxter Travenol
Labs., 952 F.2d 388, 392 (Fed.Cir.1991) (“[W]hen unexpected results are
used as evidence of nonobviousness, the results must be shown to be
unexpected compared with the closest prior art.”).
Accordingly, we sustain the Examiner’s rejection of the claims as
obvious over the teachings of Pier in view of Crewson.
IV. ORDER
The rejection of claims 1-17 under 35 U.S.C. § 103(a) as unpatentable
over Pier in view of Crewson is affirmed.

TIME PERIOD FOR RESPONSE
Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED

Appeal 2012-003798
Reexamination Control 95/001,147
Patent US 7,217,368 B2

11
PATENT OWNER:

THE MICHAUD-DUFFY GROUP LLP
306 INDUSTRIAL PARK ROAD
SUITE 206
MIDDLETOWN CT 06457

THIRD PARTY REQUESTER:

MORRISON & FOERSTER, LLP
1650 TYSONS BOULEVARD
SUITE 400
MCLEAN, VA 22102

cu