Ex Parte Haase

Board of Patent Appeals and Interferences

Jul 17, 2012

10413849 (B.P.A.I. Jul. 17, 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.
10/413,849 04/15/2003 Richard A. Haase CV005-CIPIII 5840
45922 7590 07/17/2012
RICHARD A. HAASE (INVENTOR)
4402 RINGROSE DRIVE
MISSOURI CITY, TX 77459
EXAMINER
HRUSKOCI, PETER A
ART UNIT PAPER NUMBER
1778
MAIL DATE DELIVERY MODE
07/17/2012 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)
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UNITED STATES PATENT AND TRADEMARK OFFICE
_______________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_______________

Ex parte RICHARD A. HAASE, pro se
______________

Appeal 2010-009940
Application 10/413,849
Technology Center 1700
_______________

Before CHUNG K. PAK, CHARLES F. WARREN, and
RAE LYNN P. GUEST, Administrative Patent Judges.

WARREN, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING
Appellant filed a Request For Rehearing before the Board pursuant to
37 C.F.R. § 41.50(b)(2) on November 30, 2011, of our Decision entered September
30, 2011, wherein we affirmed the Examiner’s grounds of rejection under
35 U.S.C. § 103(a), designating our affirmance of the grounds as new grounds of
rejection under 37 C.F.R. § 41.50(b), and requests that the Board retain jurisdiction
of the Appeal. Dec. 3-4, 65-66; Req. 37.
A request under § 41.50(b)(2) for rehearing must comply with § 41.52 and
thus must be based “upon the same record” before the Board in the Decision. We
determine Appendices C through E in the Evidence Appendix of the Request
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contain copies of documents with respect to proceedings in the United States
District Court for the Eastern District of Texas (case no. 06-CV-0197) in
ClearValue, Inc. v. Pearl River Polymers, Inc., 735 F.Supp.2d 560 (E.D. Tex.
2010), involving Appellant’s U.S. Patent 6,120,690 (‘690 patent),1 which were not
previously of record. Appendices A and B in the Evidence Appendix of the
Request also contain copies of documents related to such proceedings previously
submitted to the Examiner as was the ‘690 patent in Appendix F.
We did not consider arguments and documents relating to the district court
proceedings and the ‘690 patent presented in the Briefs in our prior Decision. Dec.
28 n.11. We similarly do not consider the additional arguments and evidence
relating to such court proceedings submitted with the Request. Req. 83-85. Cf. In
re Giolito, 530 F.2d 397, 400 (CCPA 1976).
Accordingly, we consider the Request upon the same record before us in the
prior Decision. 37 C.F.R. § 41.50(b)(2). See Manual of Patent Examining
Procedure (MPEP) § 1214.01 (8th ed., Rev. 3, August 2005).
A Rehearing before the Board must comply with 37 C.F.R. § 41.52(a)(1)
which specifies in pertinent part: “[t]he request for rehearing must state with
particularity the points believed to have been misapprehended or overlooked by the
Board.” See MPEP § 1214.03 (8th ed., Rev. 3, August 2005).
Appellant submits we misapprehended and/or overlooked 57 points in
reaching our Decision. Req. 17-36. Appellant submits arguments in these respects
as well as additional arguments. Req. 37-82, 86-109. We consider Appellant’s
arguments under headings corresponding to headings in our Decision to which the
arguments pertain.

1 US 6,120,690 issued to Haase on September 19, 2000, and matured from
Application 09/140,203, filed August 12, 1998.
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I. Claim interpretation
A. Claims 1-3, 56, and 75
Appellant contends our construction of “representative claim 1 as specifying
a process for liquid-solids separation in raw water by any chemical treatment to
reduce to any extent, however small, at least one of total suspended solids,
turbidity, color, and TOC of the raw water, to form a separated water,” while
appreciated by Appellant, should instead be stated as “‘reduce to [that required] at
least one of total suspended solids, turbidity, color, and TOC of the raw water to
form a separated water.” Dec. 5; Req. 17, 37-38 (pt. 1). Appellant contends
“‘effective amount’ should be defined as ‘the minimum dosage required’; and that,
‘sufficient’ should be defined as ‘a required dosage,’” relying on the district court’s
construction of terms “effective amount” and “sufficient” in a “Markman Claim
Construction Opinion” in “an enforcement action for the parent” ‘690 patent. Req.
37-38. We are not convinced by Appellant’s position that our interpretation is
unreasonable.
We interpreted representative claim 1 by giving the terms thereof the
broadest reasonable interpretation consistent with the written description in the
present Specification. Dec. 4-7, citing In re Suitco Surface, Inc., 603 F.3d 1255,
1259 (Fed. Cir. 2010); In re Morris, 127 F.3d 1048, 1054-55 (Fed. Cir. 1997); In
re Zletz, 893 F.2d 319, 321-22 (Fed. Cir. 1989). This standard applies during the
examination of a patent application, see, e.g., Morris, 127 F.3d at 1054; Zletz,
893 F.2d at 321, including examination of an application for reexamination of a
patent, see, e.g., Suitco Surface, 603 F.3d at 1259, and is not the standard applied
in court proceedings involving a patent. See, e.g., Phillips v. AWH Corp., 415 F.3d
1303, 1316-17 (Fed. Cir. 2005) (en banc); Morris, 127 F.3d at 1054; Zletz, 893
F.2d at 321-22.
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We find Application 09/140,203 from which the ‘690 patent matured is not
the immediate parent of the present Application, and Appellant has not established
the present Application contains the same disclosure as the patented Application
which is separated from the present Application by several other Applications,
including continuation-in-part Applications which may contain more or less
subject matter than their parent Application(s).2 See MPEP § 201.08. Appellant
does not point out where support is found in the present Specification for the
asserted construction of the claim language. Req. 37-38.
II. The Grounds of Rejection
A. Claims 1-3, 56, and 75: Hassick
1. Hassick
(i)
Appellant contends we found “Hassick discloses that the water-soluble
cationic polyamines can have the specified structural formula - [R-NR1R2]n-
wherein n ranges from 2 to 50,000,” and “Hassick discloses that the preferable
molecular weight range is ‘about 500 to about 200,000, as determined by gel
permeation chromatography.’” Dec. 9-10, citing Hassick col. 2 ll.29-46, col. 2
ll.47-49; Req. 17-18, 38 (pt. 2).
Appellant submits “Hassick teaches a molecular weight range of about less

2 The official records of the USPTO show the present Application is a
continuation of abandoned Application 09/675,695, filed September 29, 2000,
which is a continuation-in-part of PCT/US99/18338, filed August 12, 1999, and a
continuation-in-part of abandoned Application 09/313,616, filed May 18, 1999.
PCT/US99/18338 is a continuation of (1) Application 09/140,203 (‘690 patent),
filed August 12, 1998, which is a continuation-in-part of abandoned Application
08/931,167, filed September 16, 1997, and (2) abandoned Application 09/343,616,
filed June 30, 1999, which is also a continuation-in-part of abandoned Application
08/931,167.
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than 120 ([CH3-NCH2CH2]2 → 57 X 2 = 114) to about greater than 5,000,000
(R groups of C2 to Cx); while, Hassick teaches a preferred molecular weight range
of 500 to about 200,000.” Req. 38 (emphasis deleted). Appellant contends the
independent claims are limited “to a molecular weight ranges of at least 500,000,”
and thus, while the “claimed range of molecular weight overlaps with the
molecular weight teachings of Hassick . . . Appellant’s claimed range of molecular
weight is NOT within the preferred molecular weight range of Hassick.” Req. 38.
Appellant further contends we found “Hassick discloses . . . polydimethyl
diallyl ammonium chloride (polyDMDAAC)[3]. . . in the preferable molecular
weight range of ‘from about 1,000 to about 5,000,000.’” Dec. 10, citing Hassick
col. 2 ll.53-65; Req. 18, 38 (pt. 3). Appellant again submits the independent claims
are limited “to a molecular weight of at least about 500,000.” Req. 38.
We agree with Appellant’s admission that one of ordinary skill in the art
would have determined from the definitions of formula members n, R, R1, and R2
of Hassick’s structural formula – [R-NR1R2]n- that the molecular weight range for
the water-soluble cationic polyamines can be from about 120 to greater than
5,000,000. See Dec. 9-10, 15-16.
We cannot agree with Appellant’s position. We determined Hassick’s
disclosed molecular weight ranges for water-soluble cationic polyamines, as
admitted by Appellant, and for DADMAC polymers, as pointed out by Appellant,
encompass the molecular weight ranges of claims 1 (“at least about 500,000 to
about 1,000,000”) and 2 (“at least about 1,000,000 to about 5,000,000”), and at

3 Hassick uses polyDMDAAC for compounds designated polydimethyl diallyl
ammonium chloride, and Appellant uses DADMAC for compounds designated
diallyl dimethyl ammonium chloride, which are the same polymers. See Dec. 6
and 10. To avoid confusion herein, we use DADMAC and polyDADMAC
interchangeably in referring to the polymers.
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least overlap with the lower end claimed lower molecule weight limit of “at least
about 500,000” in claims 56 and 75 and of “at least about 5,000,000” in claim 3.
See Dec. 7, 14-16, 22. We note Hassick’s Examples 15-17 and 59-64 describe to
one of ordinary skill in the art processes which utilize commercial DADMAC
polymers having a high molecular weight of 1,000,000-2,000,000 that falls within
the molecular weight ranges in claims 1, 2, 56 and 75, thus reading on processes
encompassed by these claims. Dec. 13-14. In this respect, Appellant does not
dispute our finding that the commercial H MW polyDMDAAC would inherently
include at least one polyDMDAAC polymer compound that has a molecular
weight of about 1,000,000, and thus falls within claim 1. Dec. 14.
We understand Appellant to argue Hassick does not recognize the criticality
of a molecular weight of at least 500,000 for water-soluble cationic polyamines
and DADMAC polymers for processes of liquid-solids separation in raw water and
separating solids from waste water to achieve the results specified in the claims,
and thus the claimed processes would not have been obvious over Hassick. See
Dec. 5; see above p. 3. However, Appellant’s contention that the minimum
molecular weight of 500,000 is critical is unsupported by argument or evidence
with respect to the molecular weight ranges taught by Hassick. See Dec. 22-24,
citing In re Peterson, 315 F.3d 1325, 1330-31 (Fed. Cir. 2003); In re Woodruff,
919 F.2d 1575, 1577-78 (Fed. Cir. 1990). Furthermore, we determine Hassick’s
description of a molecular weight range for water-soluble cationic polyamines by
describing the formula for these compounds, as admitted by Appellant, supports a
determination of prima facie obviousness of the claimed processes even though
Hassick does not further describe that molecular weight range as “preferred.” See
Dec. 15-16, citing In re Lamberti, 545 F.2d 747, 750 (CCPA 1976).

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(ii)
Appellant submits we erred in finding “Hassick discloses that the synergistic
flocculation composition of aluminum chlorohydrate and water-soluble cationic
polymer are used in a weight ratio of at least 5:1 and in amounts effective to reduce
turbidity.” Dec. 10, citing Hassick col. 2 l.66 to col. 3 l.21; Req. 18, 39 (pt. 4).
Appellant contends that “results in Hassick for the combination of aluminum
chlorohydrate (ACH) with a cationic water-soluble polymer DO NOT ‘produce a
result not independently obtainable,’” and thus do not exhibit synergy:
Specifically, Hassick obtains final turbidity results of 0.45 to 1.8
([Table I, Examples 11-14]) and 0.6 to 7.0 ([Table II, Examples
47-58]) using ACH alone; and Hassick obtains final turbidity results
of 8.6 to 10.1 ([Table II, Examples 23-46]) using either
polyDADMAC or polyamine, e.g., polyEpi-DMA,[4] alone; while,
Hassick, obtains final turbidity results of 1.3 to 1.6 ([Table I,
Examples 15-22]) and 1.9 to 5.4 ([Table II, Examples 59-74])
combining ACH with polyEpi-DMA or with polyDADMAC; and
while, Hassick obtains final turbidity results of 1.3 to 1.6 ([Table I,
Examples 15-17]) and 1.9 to 4.6 ([Table II, Examples 59-63])
combining ACH with a high molecular weight (HMW)
polyDADMAC, within the molecular weight range claimed by
Appellant.
Req. 39. Appellant thus submits “Hassick SIGNIFICANTLY obtains improved
results by using ACH alone, as compared to his teaching combination and as
compared to his teaching combination with a HMW polyDADMAC,” contending
“Hassick, in his results, both teaches away from the combination and teaches to use
ACH alone.” Req. 39, 39-40. Appellant further asserts Hassick’s results

4 Hassick does not use an acronym for water-soluble cationic polyamine
epichlorohydrin-dimethylamine polymers, referring to these polymers as
“Polyamine” in the Examples. See Dec. 9-10, 12, citing Hassick col. 2 ll.50-52,
col. 4 ll.20-22, cols. 5-6, and Table II. Appellant uses the term “polyEpi-DMA”
for the same polymers. See Dec. 6.
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significantly teach “‘weight ratios’ and not a specific ‘results effective molecular
weights.’” Req. 39 (emphasis deleted).
We are not convinced we misapprehended the plain disclosure of Hassick.
We used the term “synergistic” with its ordinary meaning of relating to synergy,
that is in context, the effect of the combined ingredients in a composition is greater
than the sum of the effect of each ingredient separately. See, e.g., Merck & Co.,
Inc. v. Biocraft Labs., Inc., 874 F.2d 804, 808 (Fed. Cir. 1989) (quoting Sakraida v.
Ag Pro, Inc., 425 U.S. 273, 282 (1976)) (“evidence of unexpected ‘synergistic’
properties . . . should at least demonstrate ‘an effect greater than the sum of the
several effects taken separately.’”). We find one of ordinary skill in the art would
have recognized that Hassick uses the term “synergistically” in the same manner.
Hassick col. 3 ll.22-29.
Appellant does not dispute our findings that Hassick would have disclosed to
one of ordinary skill in the art processes for flocculation of suspended solids with
synergistic flocculation compositions of ACH and Polyamine polymers or
DADMAC polymers which have molecular weights in the disclosed ranges and
used in weight ratios of at least 5:1. Dec. 9-10. See ClearValue, Inc. v. Pearl
River Polymers, Inc., 668 F.3d 1340, 1344 n.1 (Fed. Cir. 2012) (“Hassick teaches
that a combination of high molecular weight DADMAC polymer with ACH
‘synergistically reduce[s] turbidity in aqueous systems, particularly low turbidity
. . . low alkalinity systems (i.e., 150 ppm or less).’ Hassick col. 3 ll.2-6; see also
Hassick col. 2 ll.53-65.”). We further found the teachings of Hassick are reflected
in the data reported in Hassick’s Tables I and II wherein the described flocculation
compositions, containing ACH and either polyDMDAAC polymers or Polyamine
polymers, are shown to be synergistically effective in reducing turbidity in the two
different tests described in Hassick’s Examples. Dec. 10-12.
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Appellant’s contentions are based on the asserted analysis of reduction in
turbidity data from illustrative examples in the two different tests reported in
Hassick’s Tables I and II and do not establish that contrary to the clear description
of synergy one of ordinary skill in the art would have found in Hassick, the
illustrative examples do not describe synergistic flocculant compositions of ACH
and either Polyamines or polyDADMAC. Appellant merely states ranges of
results summarizing the compositions containing each of the particular ingredients
alone and the compositions containing combinations of ingredients.
Indeed, Appellant does not analyze the reduction in turbidity data on the
basis of the specific tested flocculant compositions containing the stated weight
ratios of ACH and either Polyamines or polyDADMAC of different molecular
weights, at the active dosage (ppm) stated in the illustrative examples, with
flocculant compositions containing the same amount by weight of only ACH, only
Polyamine and only polyDMDAAC of the same molecular weight at the same
stated dosage (ppm), which analysis is just as necessary to show that synergism is
absent as it is to show that it is present. See Merck v. Biocraft, 874 F.2d at 808.
We found the results reported in Hassick’s Tables I and II are respectively
based on different tests conducted on water with different initial turbidity and
alkalinity using different dosages of different weight ratios of ACH and two
Polyamines of different molecular weights and three polyDADMACs of different
molecular weights. Dec. 10-12, citing Hassick col. 4 ll.5-25, col. 4 ll.40-58,
col. 5 l.31 to col. 6 l.35. We find none of the Examples reported in Table I involve
a composition containing a Polyamine or polyDMDAAC alone. In this respect, we
further find the different test conditions resulting in the turbidity reduction data in
Table II does not permit comparison of the results with flocculant compositions of
Polyamine polymers alone and polyDADMAC alone in Examples 23-43 in Table
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II with the data in Table 1. We find that in light of the thus limited data in Table I,
the reduction in turbidity to a Supernatant Clarity of 1.3 to 1.6 reported for the
flocculant compositions of ACH and either Polyamine polymers or polyDADMAC
having the stated molecular weights and used in the stated weight ratios at a
Product Dosage of 10 ppm in Examples 15-22, is greater than the reduction in
turbidity to a Supernatant Clarity of 1.8 reported for the flocculant composition of
ACH alone at the same Product Dosage of 10 ppm in Example 11. Indeed, the
Product Dosage of 10 ppm of the flocculant compositions of Examples 15-22
contain a lesser amount of ACH than the Product Dosage of 10 ppm of the
flocculant composition of Example 11. We find the evidence in Table II is not
susceptible to the same ready analysis, and we thus do not undertake a more
thorough analysis of the evidence in Table II than Appellant. Cf. In re Baxter
Travenol Labs., 952 F.2d 388, 392 (Fed. Cir. 1991) (“It is not the function of this
court to examine the claims in greater detail than argued by an appellant, looking
for nonobvious distinctions over the prior art.”).
Accordingly, Appellant’s contentions with respect to the evidence in
Hassick’s Tables I and II are unsupported by reliable analysis and thus entitled to
little, if any, weight. See, e.g., In re De Blauwe, 736 F.2d 699, 705 (Fed. Cir.
1984); In re Payne, 606 F.2d 303, 315 (CCPA 1979); In re Lindner, 457 F.2d 506,
508 (CCPA 1972). Indeed, Appellant has not overcome the strong presumption
based on the evidence in Hassick that the disclosed processes using the synergistic
flocculant compositions, if employed by one skilled in the art, will produce the
results taught and claimed by Hassick. Cf., e.g., Lamberti, 545 F.2d at 751 n.2
(“At best, appellants have merely shown that it is possible to follow the process in
one example each of MacGregor and Cisney without success. And even then, there
is no showing that one of ordinary skill in the art, making adaptations within the
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skill of the art, could not have successfully carried out each process.” (citation
omitted)); In re Weber, 405 F.2d 1403, 1407 (CCPA 1969) (“We do not think that
appellants’ mere showing that it is possible to operate within Mautner’s disclosure
without obtaining his results is sufficient to overcome the strong presumption that
the process of a patent if used by one skilled in the art will produce the results
alleged by the patentee.” (citation omitted)).
Furthermore, Appellant’s contention that Hassick’s teachings are directed to
“weight ratios” and not “molecular weights” disregards the fact that Hassick
teaches a wide range of molecular weights and exemplifies the disclosed process
with Examples directed to two Polyamines of different molecular weights and
three polyDADMACs of different molecular weights. Dec. 9-12, citing Hassick
col. 1 l.64 to col. 4 l.25, col. 4 ll.40-58, col. 5 l.31 to col. 6 l.35, Examples 15-23
and 59-74.
Accordingly, we are of the opinion that contrary to Appellant’s position,
Hassick’s disclosed invention neither teaches the use of flocculant compositions
containing ACH alone nor teaches away from the disclosed use of the inventive
synergistic flocculant compositions, as indeed, Hassick plainly would have
disclosed to one of ordinary skill in the art that the synergistic flocculant
compositions are useable and have been used for Appellant’s purpose. See, e.g., In
re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004) (a prior art disclosure does not
teach away if the “disclosure does not criticize, discredit, or otherwise discourage
the solution claimed.”); In re Gurley, 27 F.3d 551, 552-53 (Fed. Cir. 1994) (“We
share Gurley’s view that a person seeking to improve the art of flexible circuit
boards, on learning from Yamaguchi that epoxy was inferior to polyester-imide
resins, might well be led to search beyond epoxy for improved products. However,
Yamaguchi also teaches that epoxy is usable and has been used for Gurley’s
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purpose.”).
(iii)
Similarly, Appellant submits, with respect to our finding that Hassick
describes the commercial “High MW [PolyDADMAC]” having a
“MW= 1,000,000-2,000,000,” that while this polyDADMAC “is within the
teachings and claimed range of Appellant,” “Hassick teaches away from
Appellant’s instant claims.” Dec. 10; Req. 18, 39-40 (pt. 5) (emphasis deleted).
We found Hassick’s Examples 15-17 and 59-64, illustrating synergistic
flocculant compositions containing ACH and this polyDADMAC, are credible
evidence the claimed processes encompassed by claims 1, 2, 56 and 75 lack
novelty. Dec. 14. See ClearValue, 668 F.3d at 1344 n.1 (“Example 15 of Hassick
teaches using a blend of ACH and DADMAC with a molecular weight between
1-2 million to clarify water with alkalinity of between 60-70 ppm. [Hassick] col. 4
l.5 - col. 5 l.29.”). We also determined arguments that Hassick teaches away from
a process which uses a flocculant compositions containing an aluminum polymer
(AP5) and a cationic ammonium polymer (AmP6) do not address the issue of the
anticipation of claims 1, 2, 56, and 75 by Hassick’s Examples 15-17 and 59-64.”
Dec. 64, citing e.g., Celeritas Techs., Ltd. v. Rockwell Int’l Corp., 150 F.3d 1354,
1361 (Fed. Cir. 1998) (“[T]he question whether a reference ‘teaches away’ from
the invention is inapplicable to an anticipation analysis.”).
We remain of that view here. ClearValue, 668 F.3d at 1344 (citing Celeritas
Techs., 150 F.3d at 1361).

5 Appellant uses the term “AP” to refer to an aluminum polymer. See Dec. 5;
Spec. 1:17.
6 Appellant uses the term “AmP” to refer to an ammonium polymer such as
polyDADMAC and polyEpi-DMA. See Dec. 6.
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2. The Rejections
b.
Appellant submits we erred in finding that Hassick’s Examples 15-17 and
59-64 describe processes for reducing turbidity using flocculant compositions
containing ACH and the commercial H MW polyDADMAC having a molecular
weight distribution of 1,000,000-2,000,000, at different weight ratios, provide
credible evidence that claims 1, 2, 56, and 75 lack novelty. Dec. 13-14; Req.
18-19, 40-43 (pts. 6, 7).
Appellant contends the precedent of our reviewing court requires that every
single word of every claim element of the appealed claims, including each member
of the claimed group of aluminum polymers and the exact claimed molecular
weight range for cationic ammonium polymers, must be described in Hassick in
order to anticipate claims 1, 2, 56, and 75. Req. 40-43. Appellant contends
Hassick does not anticipate these claims because Hassick discloses only ACH and
not the rest of the members of the claimed aluminum polymers, and Hassick’s
molecular weight range for polyDMDAAC “overlaps” with the claimed ranges in
claims 2, 56 and 75. Req. 41, 42-43.
Appellant does not dispute our finding that the commercial H MW
polyDMDAAC would inherently include at least one polyDMDAAC polymer
compound that has a molecular weight of about 1,000,000, and thus falls within
claim 1. Dec. 14; Req. 42.
Appellant misconstrues the precedent of our reviewing court and its
predecessor court. It is well settled that a claim is anticipated by a reference that in
fact describes to one skilled in the art at least a single embodiment falling within
the claim. See, e.g., In re Gosteli, 872 F.2d 1008, 1010 (Fed. Cir. 1989) (“Section
102(e) bars the issuance of a patent if its generic claims are anticipated by prior art
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disclosing individual chemical species.”); Titanium Metals Corp. of Am. v. Banner,
778 F.2d 775, 782 (Fed. Cir. 1985) (citing In re Petering, 301 F.2d 676, 682
(CCPA 1962)) (“It is also an elementary principle of patent law that when, as by a
recitation of ranges or otherwise, a claim covers several compositions, the claim is
‘anticipated’ if one of them is in the prior art.”). This is so where the reference
describes a single embodiment falling within a claimed range, see, e.g., Titanium
Metals, 778 F.2d at 782 (disclosure of a discrete embodiment, identified by data
points on a graph, within the claimed range anticipates the claim), or falling within
claimed compositions defined by listings of different ingredients. See, e.g., In re
Sivaramakrishnan, 673 F.2d 1383, 1385 (CCPA 1982) (“[T]he fact remains that
one of ordinary skill informed by the teachings of [the reference] would not have
had to choose judiciously from a genus of possible combinations of resin and salt
to obtain the very subject matter to which appellant’s composition per se claims are
directed.”).
c.
(i)
Appellant submits we erred in agreeing with the Examiner that one of
ordinary skill in the art would have recognized from the teachings of Hassick that
the molecular weight of the Polyamine and DADMAC polymers, used with ACH
to form flocculant compositions, is a result effective variable and would have
determined workable or optimum molecular weight ranges for the water-soluble
cationic polymers to obtain a desired result in reducing turbidity of treated water as
taught by Hassick. Dec. 14-15; Req. 19-20, 43-44 (pt. 8).
In these respects, we remain unconvinced by Appellant’s contentions with
respect to Hassick’s disclosure of molecular weight ranges for AmP, mass ratios,
and synergistic compositions. See above pp. 4-11.
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(ii)
Appellant agrees with our finding that Hassick does not limit the molecular
weight ranges of the water-soluble cationic polymers. Dec. 15; Req. 20, 44-45 (pt.
9). Appellant contends “Hassick has NO teachings in regard to the criticality of
molecular weight other than as a description of the water-soluble cationic polymers
tested,” pointing out “[a]gain, Hassick taught mass ratios; Hassick did not teach
importance or criticality of molecular weight.” Req. 45 (emphasis deleted).
We were unpersuaded by these contentions above and remain so here. See
above pp. 4-7, 11-12.
B. Claim 22: Nier and Hassick
2. The Rejections
b.
Appellant submits we erred in determining one of ordinary skill in the art
would have combined Nier and Hassick leading to the use of Hassick’s
commercial H MW polyDMDAAC having a molecular weight of 1,000,000 to
2,000,000 as a polymer flocculant aid in Nier’s process of removing algae from
raw water. Dec. 17-18; Req. 20, 45 (pt. 10).
Appellant contends Hassick does not teach or suggest removing algae from
raw water and further discloses that the worst results are obtained using AmP
alone, thus teaching away from claim 22. Req. 45; see above pp. 6-11.
We cannot agree with Appellant’s position. We find no disclosure in Nier
requiring the polymer flocculant aid, which can be a DADMAC polymer, must be
one that has been used in a process for removing algae from water. Indeed, Nier
teaches that the purpose of the polymer flocculant aid is to agglomerate small flocs
to obtain a faster settlement rate. See Dec. 16-17, citing Nier col. 5 ll.7-32. Thus,
we determined one of ordinary skill in the art would have used the commercial
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H MW polyDMDAAC used in Hassick’s processes of reducing turbidity in water
as a DADMAC polymer flocculant aid in Nier’s process. Dec. 18. Furthermore,
Appellant has not shown that the results of reducing turbidity in water using the
commercial H MW polyDMDAAC reported by Hassick would have led one of
ordinary skill in the art away from using Hassick’s H MW polyDMDAAC as a
polymer flocculant aid in Nier’s process. See above pp. 6-11. Thus, Appellant’s
position is entitled to little, if any, weight. See, e.g., De Blauwe, 736 F.2d at 705;
Payne, 606 F.2d at 315; Lindner, 457 F.2d at 508.
III. Appellant’s Position
B. Discovery of the Source of the Problem
(Claims 1-4, 56, 75 and 76)
1.
Appellant submits we erred in finding that Hassick and the combination of
Kigel and Simmsgeiger teach the claimed molecular weight ranges of at least
500,000 for AmP and PA7 when used with an AP. Dec. 22-24; Req. 20-21, 45-49
(pts. 11-15); Req. 86. Appellant contends that none of Hassick, Kigel and
Simmsgeiger teaches the criticality or importance of the claimed AmP (claims 1-3,
56, 75 and 768) and PA (claims 4 and 76) molecular weight of at least about
500,000 when used with an AP. Req. 45-46 (pt. 11); Req. 86. See above pp. 4-6
(Hassick).
Appellant contends we erred in finding Hassick’s preferred molecular
weight range of about 1,000 to about 5,000,000 for AmP encompasses claims 1, 2,
56 and 75, and overlaps with the molecular weight range in claim 3, and Hassick’s

7 Appellant uses the term “PA” to refer to a polyacrylamide polymer. See Dec. 6.
8 We noted that claim 22 does not exclude a flocculant composition that contains
an AP. See Dec. 22.
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illustrative processes using the commercial HMW polyDADMAC establishes a
lack of novelty of these claims 1, 2, 56 and 75. Req. 20-21, 46-48 (pt. 12).
Appellant submits “Hassick teaches a molecular weight range of about 120 to
greater than about 5,000,000,” which is not the specified molecular weight ranges
in claims 1, 2, 56, and 75, and Hassick’s processes with the high molecular weight
polyDADMAC do not anticipate these claims. Req. 46-47. See above pp. 4-6,
12-14.
Appellant contends we erred in finding “claims 1-3 essentially fragment
Hassick’s preferred molecular weight range into 3 parts, with claims 1 and 2 along
with claims 56 and 75 being anticipated by Hassick.” Req. 23, 48 (pt. 13).
Appellant again contends “Hassick cannot anticipate the instant claims.” Req. 48.
See above pp. 12-14.
Appellant contends we erred in determining “the fact that Appellant
fragmented Hassick’s preferred molecular weight range does not evince
nonobviousness of the claimed processes, and indeed, results in an overlapping
range only with respect to the open-ended molecular weight range of claim 3.”
Req. 21, 48-49 (pt. 14). Appellant contends “there is an overlapping range
between all of Appellant’s instant claims and the teachings of Hassick, not just
instant claim 3.” Req. 48-49.
Appellant contends we erred in finding “Hassick’s anticipation of claims 1,
2, 56, and 75 makes clear that specific processes encompassed by these claims are
described to one of ordinary skill in the art.” Req. 21, 49 (pt. 15). Appellant
submits there is overlapping between all of the claimed ranges and the teachings of
Hassick, and Hassick does not anticipate as argued. Req. 49. See above pp. 12-14.
We are unconvinced by Appellant’s arguments that we erred in finding
Hassick, Kigel, and Simmsgeiger teach the claimed molecular weight ranges of at
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least 500,000 for AmP and PA when used with an AP. We remain of the opinion
Hassick’s molecular weight ranges for Polyamines and polyDADMACs
encompass the molecular weight ranges of claims 1 and 2 and at least overlapped
the lower end of claimed lower molecule weight ranges of claims 3, 56 and 57.
Indeed, Appellant has not established the criticality of a molecular weight of at
least about 500,000 for either water-soluble cationic polymer. See above pp. 6-7.
We also remain of the opinion Hassick’s Examples using the commercial H MW
polyDADMAC anticipate claims 1, 2, 56 and 57. See above pp. 12-15. We are not
persuaded otherwise by Appellant’s further contentions in these respects.
We note Appellant does not contest our findings with respect to Kigel and
Simmsgeiger. Dec. 23.
2.
Appellant submits we erred in misapprehending “Appellant’s contention that
the claimed combination of AP with either AmP or PA solves a problem associated
with water clarification with respect to, among other things, separated and finished
water turbidity, recognized only by Appellant,” with respect to which Appellant
argued “Appellant ‘identified the critical import of AP micro-floc formation in the
clarification of water’ which is solved by ‘the combination of an AmP or PA
comprising a molecular weight of at least about 500,000 with the AP.’” Dec.
24-27; Req. 21-24, 49-54 (pts. 16-20); see Req. 86-87.
(i)
Appellant submits the “previous problems associated with water
clarification” are disclosed in the Specification and are solved by the identification
of “the critical import of molecular weight in the AmP or PA when used with an
AP in regard to micro-floc formation in the clarification of water,” which is the
“claimed combination of an AmP or PA comprising said critical molecular weight
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. . . of at least about 500,000, when used with an AP.” Dec. 24; Req. 49-50
(emphasis deleted) (pt. 16); see Req. 86-87.
Appellant contends we erred in finding Hassick would have disclosed to one
of ordinary skill in the art processes, including anticipatory processes, for reducing
turbidity in water using flocculation compositions of AP and AmP “‘which
synergistically settle fine suspended matter from aqueous systems,’ thus addressing
turbidity in water, and indeed, discloses anticipatory examples in illustrating the
invention.” Dec. 24-25; Req. 50 (pt. 17). Appellant submits we found Hassick
does not limit the molecular weight of the water-soluble cationic polymers, and
that Hassick does not anticipate the claims. Req. 50. See above pp. 14-15, 16-18.
With respect to anticipation, Appellant acknowledges “Hassick presents a prime
[sic] facie case of obviousness . . . [which] Appellant must traverse.” Req. 50.
Appellant contends we erred in finding “while Appellant may have further
elucidated the function served by a coagulant agent in forming ‘micro-flocs,’
Hassick and Kigel would have taught the combinations of coagulant AP and
flocculant AmP and PA, respectively, to address turbidity in water to one of
ordinary skill in the art,” and determining that Appellant only elucidated a
mechanism and new benefit of processes shown to be old by Hassick and Kigel.
Dec. 25; Req. 22, 50-51 (pt. 18). Appellant submits the “mechanism” of Hassick’s
process is “a mass ratio of [ACH] to a water-soluble cationic polymer” while the
molecular weight range is about 120 to over 5,000,000, and the preferred
molecular weight range is 1,000 to 5,000,000, which contrasts with the molecular
weight ranges claimed in claims 1-4, 22, 56, 75 and 76. Req. 51. See above pp.
4-12, 14-19. Appellant again submits that we found that Hassick does not limit the
molecular weight of the water-soluble cationic polymers, and Hassick does not
teach or comprise the criticality of molecular weight. Req. 51. See above
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pp. 12-14, 16-18.
We are no more convinced here than we were above by Appellant’s
arguments that only Appellant, and not Hassick, teaches using water-soluble
cationic polymers and PA polymers of at least about 500,000 molecular weight
combined with AP in processes to reduce turbidity by separating suspended
particles from aqueous systems, thus addressing problems associated with water
clarification with respect to water turbidity recognized only by Appellant. Indeed,
we addressed above Appellant’s contentions with respect to Hassick’s teachings of
molecular weight ranges for Polyamine and DADMAC water-soluble cationic
polymers, that molecular weight is effective over a wide range, and of anticipatory
illustrative processes that Appellant further relies on. Furthermore, while
Appellant points out we found Hassick does not limit the molecular weight range
of the water-soluble cationic polymers to the upper end of the described and
preferred ranges, neither does Appellant limit the upper end of the molecular
weight ranges in claims 3, 56 and 75, and Hassick discloses examples of processes
which anticipate claims 56 and 75 and molecular weight ranges which overlap the
range claimed in claim 3.
We again note Appellant does not contest our findings with respect to Kigel
and Simmsgeiger. Dec. 23-25.
Thus, we remain of the opinion Appellant has not solved problems
associated with water turbidity in processes for water clarification using water-
soluble cationic polymers having molecular weight in the claimed ranges, but
instead has only elucidated a mechanism by which this occurs in the processes
disclosed by Hassick and Kigel. Indeed, to the extent that a problem with respect
to turbidity existed in water clarification processes, once Hassick and Kigel
disclosed the processes using flocculation compositions containing AmP or PA
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with AP to reduce turbidity, the problem addressed by Appellant’s claimed
invention was solved. See, e.g., Newell Cos., Inc. v. Kenney Mfg. Co., 864 F.2d
757, 768 (Fed. Cir. 1988) (“[O]nce another supplied the key element, there was no
long-felt need or, indeed, a problem to be solved.”).
(ii)
Appellant contends we erred in finding “in view of the evidence in Hassick
and Kigel showing the use of an AP coagulant with an AmP and PA flocculant,
respectively, prior to the effective filing date of the present Application, the
evidence in the Breslin Declaration and the opinion uniformly expressed in the
Breslin, Appellant Ha[a]se, Audrey L, Ha[a]se, Schulhoff, and Taylor Affidavits
are entitled to little, if any, weight.” Dec. 25-27; Req. 22-24, 51-54 (pts. 19, 20).
In this respect, we found the attestations in the Declaration and Affidavits are “to
the effect that, as uniformly stated in the Affidavits, prior to the effective filing
date of the present Application in 1997, ‘there was no apriori expectation or
teaching that a high molecular weight ammonium polymer would improve
clarification.’” Dec. 25-26; see Req. 51. We further found “Appellant has not
supported this assertion that Hassick would not have conveyed the clear teachings
therein, including the processes using the high molecular weight commercial
polyDMDAAC illustrated in Examples 15-17 and 59-64, to one of ordinary skill in
the art, with objective evidence.” Dec. 27.
Appellant contends the attestations in the Declaration and Affidavits are
commensurate in scope with Hassick’s preferred molecular weight range of “about
500 to about 200,000.” Req. 52 (pt. 19), citing Hassick col. 2 ll.47-49. We point
out here Hassick discloses this range for water-soluble Polyamines, which include
polyEpi-DMA, and Appellant admitted Hassick would have described a molecular
weight range of 120 to about 5,000,000 for the Polyamines. See above pp. 4-6.
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Appellant further relies on the Breslin Declaration to establish “skepticism
by experts” with respect to the claimed invention as a secondary consideration of
nonobviousness. Appellant points to Declarant Breslin’s attestation “[t]he
scientists at the R&D department [of Vulcan Specialty Chemicals] informed me
that ClearValue’s request was not the traditional technology and were concerned
that to fil[l] ClearValue’s order was a waste of time, specifically on high molecular
weight epipolyamines for raw water clarification.” Req. 52, citing Breslin Decl.9
¶ 5; Req. 88-89. We find Declarant Breslin attests Appellant contacted Vulcan
about providing ClearValue with “DADMAC polyacrylamides and high molecular
weight epipolyamines.” Breslin Decl. ¶ 3. We find Declarant Breslin further
attests “Vulcan did not manufacture DADMAC” and “I . . . provided [Vulcan’s
R&D department] with Mr. Haase’s request in an attempt to identify other
polyquaternary amines.” Breslin Decl. ¶ 4.
We fail to find in Declarant Breslin’s attestations any credible evidence the
scientists in Vuclan’s R&D department were “experts” in water treatment
processes for the reduction of turbidity or expressed “skepticism” that Appellant’s
claimed water treatment processes would work. Indeed, Declarant Breslin attests
Vulcan manufactured specialty chemicals. Furthermore, Declarant Breslin does
not describe the molecular weight or chemical structure of the “high molecular
weight epipolyamines.” Thus, we find there is no basis to correlate Declarant
Breslin’s testimony with Hassick’s disclosure of Polyamines, and even if there is,
there is no credible evidence the “high molecular weight epipolyamines” fall
outside of Hassick’s described range of 120 to about 5,000,000. We further find
there is no basis to correlate Declarant Breslin’s testimony with Hassick’s

9 Declaration under 37 C.F.R. § 1.132 of David Breslin executed November 12,
2003 (¶ 5). App. Br. 19 n. 11. See Dec. 26.
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disclosure of polyDADMAC or Kigel’s disclosure of PA polymers.
Even if it is held that the Breslin Declaration establishes “skepticism of
experts,” Appellant’s reliance on the evidence is misplaced for several reasons.
First, Hassick describes illustrative processes which anticipate claims 1, 2, 56 and
75, and thus Appellant’s argument does not apply to this extent. Second, Hassick’s
teachings, including anticipatory examples, supplied the direction to use a
synergistic flocculant composition containing ACH and Polyamines or DADMAC
polymers having molecular weights in ranges encompassing and overlapping
claimed molecular weight ranges to one of ordinary skill in the art prior to the
effective filing date of the present Application. Thus, the problem addressed by
Appellant’s claimed invention was solved, regardless of the skepticism
encountered by Appellant, before Appellant filed the present Application. Cf., e.g.,
Newell, 864 F.2d at 768. And, third, the evidence in Hassick as well as in Kigel
and Simmsgeiger establish a strong prima facie case of obviousness which is not
rebutted by the weight of Appellant’s evidence in Breslin’s Declaration. See, e.g.,
Agrizap, Inc., v. Woodstream Corp., 520 F.3d 1337, 1344 (Fed. Cir. 2008)
(secondary considerations “including substantial evidence of commercial success,
praise, and long-felt need, were inadequate to overcome a strong showing of
primary considerations that rendered the claims at issue invalid.”).
On this record, we remain unpersuaded by the evidence in the Breslin
Declaration and the opinion in the Breslin, Appellant Haase, Audrey L. Haase,
Schulhoff, and Taylor Affidavits. Req. 25-27. We find that Appellant does not
submit that the effective filing date of the present Application is prior to the
effective dates of Hassick and Kigel. Req. 51-54. Nor has Appellant submitted
evidence establishing Hassick would not have conveyed to one of ordinary skill in
the art clear teachings with respect to the processes using synergistic flocculant
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compositions to reduce the turbidity of aqueous systems, including anticipatory
illustrative processes. Req. 51-54. Indeed, we remain unconvinced by Appellant
contentions with respect to Hassick’s disclosure of molecular weight ranges for
AmP, and synergistic compositions. Req. 52 and 53-54. See above pp. 4-11.
C Surprising and Unexpected Results
(Claims 1-4, 56, 75 and 76)
1. Hill I Declaration: 10 Hassick – claims 1-3, 56 and 75
c. “Direct” Comparisons
Appellant contends we erred in the findings we made from the evidence in
the Hill I Declaration as well as from the disclosure and Figures of the
Specification and Hassick with respect to the AP and AmP (Polyamines and
polyDADMAC) compounds used in the tested compositions; the ingredients in the
tested compositions; the methodology of the tests; and the methodology of
analyzing the test results. Appellant thus submits we erred in reaching the finding
that the evidence in the Hill I Declaration Table 2 and 2a does not establish that the
claimed processes encompassed by claims 1-3, 56 and 75 exhibit unexpected
results in attaining a lower NTU in treating raw water than the tests described as
representing Hassick vis-à-vis the teachings of Hassick, and that the results are not
commensurate in scope with claim 3. Dec. 29-38; Req. 24-28, 54-65 (pts. 21-33).
In considering Appellant’s position, we will not further address Appellant’s
contentions with respect to the applicability of Hassick’s teachings. See above pp.
4-23.
(2)
(i)

10 Declaration under 37 C.F.R. § 1.132 of Dr. Robert Hill executed December 9,
2005 (Hill I Declaration). App. Br. 22 n. 22. See Dec. 28.
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We found the evidence in the record insufficient to determine whether the
presence of CV 3650 in “CV” compositions used in the processes tested in Hill I
Declaration Table 2, renders the tested processes anticipated by Hassick, pointing
out that an anticipated process cannot rebut the case of obviousness of claimed
processes encompassed by claims 1, 2, 56, and 7 over Hassick. Dec. 31-32, 35. In
this respect, we found CV 3650 contains “a ‘HMW DADMAC’ having ‘a
molecular weight greater than 1 million.’” Dec. 31-32, 31 n.14, citing Spec.
14:20-25, 18:30 to 19:4, 24:4-5. Thus, we “consider[ed] the evidence in [Hill I
Declaration] Tables 2 and 2a in the event Appellant establishes that the CV 3650-
containing processes in Table 2 are not anticipated by Hassick.” Dec. 35.
Appellant contends we erred in this respect, and points to Specification
Table 8 footnote “RM-22 is CV 3650 being a 20% active HMW DADMAC having
. . . a viscosity of 2,000 +/- 1000 cps”11 which we considered. Dec. 31-32, 35, 31
n.14; Req. 24, 54 (pt. 22). Appellant contends that based on viscosity, the
DADMAC polymers contained in CV 3650 “would have a molecular weight
ranging from 1,000,000 to 3,000,000,” which equates with “a viscosity of 2,000 +/-
1000 cps.” Req. 55. Appellant further contends that “due to overlapping ranges,
Hassick cannot anticipate.” Req. 55.
On this record, as explained by Appellant, we find that even though the H
MW DADMAC polymers contained in CV 3650 have not been specifically
identified, Hassick’s commercial H MW DADMAC polymers having a
MW = 1,000,000-2,000,000 reads on the DADMAC polymers in CV 3650 used in

11 We find that the disclosure at page 2, lines 6-7, of the Specification which
specifies a molecular weight range for generic “[h]igh molecular weight (H MW),”
relied on by Appellant, does not bear on the evidence in the Hill I Declaration.
Req. 54.
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the tests. Appellant does not contest our finding that “Hassick’s composition
containing the aluminum chlorohydrate and the commercially available
polyDMDAAC with the molecular weight distribution of 1,000,000-2,000,000
illustrated in Hassick Examples 15-17 and 59-64, would inherently include”
individual polymers within the stated range. Dec. 14. We find here that
commercial H MW DADMAC polymers include at least one polyDMDAAC
polymer compound that has a molecular weight of about 2,000,000, and thus falls
within the H MW DADMAC polymers in CV 3650 which would reasonably
contain at least one DADMAC polymer compound that has a molecular weight of
about 2,000,000 based on the “molecular weight ranging from 1,000,000 to
3,000,000” based on “a viscosity of 2,000 +/- 1000 cps.” Cf. Dec. 14.
We further find in Specification Table 8 the heading “RM-22 M, H MW
DADMAC,” but the Table 8 footnotes, including the “RM-22 is CV 3650”
footnote, do not identify the “M MW DADMAC” which is present in addition to
“H MW DADMAC.” See Dec. 31 n.14. We find the molecular weight range for
generic “[m]edium molecular weight (M MW): 500K-1,000K” disclosed at page 2,
lines 4-5, of the Specification, does not supply the omission with respect to “M
MW DADMAC” in the evidence in the Hill I Declaration. We find that in the
entries for “RM-22” for the “Product” “CV 1700” through “CV 1798”
compositions in Table 8, the amounts of each of “M MW DADMAC” and “H MW
DADMAC” are separately stated, with the “M MW” polymers present in greater
amounts than the “H MW” polymers in each “Product.” Thus, we find no
“Product” CV compositions in Table 8 used in tests in Specification Tables 9-11
included in Hill I Declaration Table 2, that contains only the H MW DADMAC
polymers contained in “CV 3650.” See Dec. 30 and 31-34.
Accordingly, on this record, we find none of the processes using CV
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compositions containing “RM-22,” thus having H MW DADMAC polymers in CV
3650 as one of the components, are anticipated by Hassick’s exemplary processes
which use only the commercial H MW DADMAC polymers.
However, we find that Hassick’s disclosed processes using ACH and the
commercial H MW DADMAC polymers, including Hassick’s anticipatory
examples containing these polymers, constitute the closest prior art with respect to
the claimed processes using DADMAC polymers encompassed by claims 1-3, 56,
and 75. Dec. 32-33, 35-36. See, e.g., Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1371 (Fed. Cir. 2007) (a finding of the closet prior art to the claimed invention
must be supported by evidence); Woodruff, 919 F.2d 1575, 1578 (“the critical
comparison is not with the commercial embodiment of McGill’s invention, but
with the method taught in his patent”).
(ii)
Appellant contends we misapprehended the ingredients in the tested “CV”
“Product” compositions. Dec. 32-34, 35-37; Req. 24-27, 55-63 (pts. 24-26, 30,
31).
Appellant contends we erred in finding “CV 1777 a three component
composition” because “CV 1777 is a two component system comprising ACH and
HMW poly DADMAC.” Dec. 33; Req. 25 and 58 (pt. 25), citing Spec. Fig. 8.
Appellant does not contest our findings “‘CV 1760 (old 1777)’ is a mixture of
Al2O3 ACH and M, H MW DADMAC,” and “‘CV 1777,’ a three ingredient
composition containing the additional aluminum oxide.” Dec. 31, 31 n.14, 33; see
Req. 24-25, 54-68. We find Specification Figure 8 shows “CV 1760 (old 1777)”
contains “RM-20 AP” and “RM-22 M,H MW DADMAC,” and in footnotes
identifies “RM-20 is CV 1100 being a 50% active 84% basic 24% measured Al2O3
ACH solution,” and “RM-22” as “RM-22 is CV 3650.” See Dec. 31, 31 n.14,
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citing Spec. Fig. 8; see above p. 26.
Appellant does not explain the notation “RM-22 M, H MWDADMAC”
which we found to indicate both “M MW” and “H MW” polyDADMAC. Dec. 31
and 31 n.14; Req. 58; see above p. 26. Appellant contends the “aluminum oxide
[(Al2O3)] is an ‘assay’ laboratory measurement of ACH chemistry, that such an
indication is NOT an indication of” Al2O3. Req. 58. However, Appellant does not
support the contention with evidence of the “assay” protocol or explain why
“Al2O3” is included as part of the “Al2O3 ACH solution” in the “RM-20 is CV
1100” footnote. Appellant also does not contend that if present, Al2O3 will not
participate in the water treatment processes used in the tests. In these respects, we
notice it is well known that Al2O3 is used in water treatment processes.
Similarly, Appellant further contends “CV 1787 is a two component system
comprising ACH and HMW polyEpi-DMA” and “CV 1740 is a three component
system comprising ACH and HMW polyDADMAC and HMW poly Epi-DMA.”
Req. 58, citing Spec. Fig. 8. We found “‘CV 1787’ is a mixture of Al2O3 ACH,
and M,HMW Epi-DMA,” thus containing Al2O3 as well as both “M MW” and
“H MW” Epi-DMA; and “‘CV 1740’ is a mixture of Al2O3 ACH, M, H MW
DADMAC, and M,HMW Epi-DMA,” thus containing Al2O3 as well as both “M
MW” and “H MW” polyDADMAC and both “M MW” and “H MW” Epi-DMA.
Dec. 31, 31 n.14.
Appellant does not raise the same contentions with respect to our finding
“‘CV 1756’ is a mixture of Al2O3 ACH, LMW Epi-DMA, and M, HMW Epi-
DMA.” Req. 58; Dec. 31, 31 n.14.
Nor does Appellant raise the same contentions with respect to our findings
that
“CV1703” is a mixture of Al2O3 ACH, Al2O3 AlCl3, M, H MW
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DADMAC, and LMW Epi-DMA. “CV1703 with LMW DAD” is a
mixture of Al2O3 ACH, Al2O3 AlCl3, M, H MW DADMAC, LMW
DADMAC, and LMW Epi-DMA. “CV 1725” is a mixture of Al2O3
ACH, Al2O3 AlCl3, M, H MW DADMAC, LMW Epi-DMA, and
M,HMW Epi-DMA.
Dec. 31 and 31 n.14. Appellant does not argue our finding that these “CV”
compositions contain Al2O3 AlCl3 (aluminum chloride) in addition to Al2O3 ACH.
Dec. 31, 31 n.14, 32-34; see Req. 24, 56-63; see above pp. 28-29. In this respect,
we find Specification Figure 8 includes the footnote “RM-21 is CV 1135 being a
10% measured Al2O3 AlCl3 solution.” See Dec. 31 n.14.
(iii)
Appellant contends we erred in finding that the Hill I Declaration Table 2
does not include tests that provide a side-by-side comparison between a claimed
process and a Hassick process that use compositions containing only ACH and a
single AmP (Polyamines or polyDADMAC) wherein the processes differ solely in
the molecular weight of the AmP, which reflects the closest prior art in Hassick
and the thrust of the ground of rejection. Dec. 32-34, 35-37; Req. 24-27, 55-63
(pts. 24-27, 29-31). In this respect, we found that “following the numbering under
the column ‘test no.,’ . . . the tests [in Hill I Declaration Table 2] correspond to, in
sequence, tests 1, 2, and 5-13 in the table in Specification Figure 9; tests 1-3, 5, and
8-10 in the table in Specification Figure 10; and tests 1-5 and 7-10 in the table in
Specification Figure 11.” Dec. 30. We find that groups of tests were performed at
different locations, as specified under “location,” and thus, with different raw
water. Hill I Decl. Table 2.
According to Appellant, the multi-ingredient “CV” “Product” compositions
used in the tests in Specification “Figures 9-11 present results of optimal
chemistries of the instant claims, comprising a HMW polyDADMAC and/or
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HMW polyEpi-DMA with ACH, comparing to the corresponding LMW
polyDADMAC or LMW polyEpi-DMA.”12 Req. 56. Appellant also contends “all
of Appellant tested compositions . . . comprising ACH and a HMW
polyDADMAC . . . represent the instant claims,” and “all of Appellant tested
compositions comprising a LMW polyDADMAC . . . are to be Hassick.” Req. 55,
56. Appellant contends that “there is no teaching in Hassick which would limit
Hassick to just polyDADMAC or to a two component system.” Req. 63; see also
Req. 59, 62.
Indeed, Appellant describes the “CV” compositions used in the test on the
basis of the molecular weight of one or two of the AmP (Polyamines or
polyDADMAC) components. Req. 56-63. For example, Appellant describes the
“side-by-side” comparison between Specification Figure 9 tests 1 (“CV1703” (M
MW and H MW DADMAC, and L MW Epi-DMA)), and 2 (“CV1703 with LMW
DAD” (M MW and H MW DADMAC, L MW Epi-DMA and L MW DADMAC))
as “test 1 (HMW) as compared to test 2 (LMW).” Req. 56; see also Req. 56-64;
see Dec. 33.
Appellant describes additional “side-by-side” comparisons in the
Specification Figure 9 tests between processes using compositions containing an
aluminum polymer, either “PAC” (polyaluminum chloride13) or AlCl3 (tests 5, 6, 8,
9, 11, and 12), as the only ingredient with processes using “CV 1740” (6
ingredients) (test 7 with tests 5 and 6, and test 10 with tests 8 and 9) or “CV 1756”
(6 ingredients) (test 13 with tests 11 and 12). Req. 56-57; Dec. 33.

12 We found that “[t]he ‘CV’ numbers in Specification Figures, e.g., 8-12, are ‘CV
products’ of ClearValue, Inc. See, e.g., Spec. 13:4-5.” Dec. 30 n.13.
13 We find that “PAC” is defined in the Specification as “poly-aluminum chloride”
and not as “ACH” as Appellant contends. Dec. 32, citing Spec. 51:13-14 (Table 9
“test 5” which results in an NTU of “1.6”); see also Dec. 30; Req. 56.
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Appellant describes “side-by-side” comparisons in the Specification Figure
10 tests “1-5 [sic 1-3 and 5]” as a comparison between processes using
compositions of ACH and either LMW polyEpi-DMA (test 1, ACH/Epi) or LMW
DADMAC (test 2, ACH/DAD) as well as a composition of “AlCl” (AlCl3) and
LMW polyEpi-DMA (test 3, AlCl/Epi) each with a process using “CV 1777”
(Al2O3, ACH, and M MW and H MW polyDADMAC) (test 5). Req. 57.
Appellant describes “side-by-side” comparisons in the Specification Figure 10 tests
“6-10 [sic 8-10]” as comparisons between processes using compositions of “AlCl”
and either LMW polyEpi-DMA (test 8, AlCl/Epi) or LMW DADMAC (test 9,
AlCl/DAD) each with a process using “CV 1787” (Al2O3, ACH, and M MW and H
MW Epi-DMA) (test 10) “which is an AP with HMW polyEpi-DMA.” Req. 57.
Appellant describes “side-by-side” comparisons in the Specification Figure
11 tests “1-5” as comparisons between processes using compositions of ACH and
either LMW polyEpi-DMA (test 1. ACH/Epi) or LMW DADMAC (test 2,
ACH/DAD) as well as a composition of “AlCl3” and either LMW polyEpi-DMA
(test 3, AlCl/Epi) or LMW DADMAC (test 4, AlCl/DAD) each with a process
using “CV1703” (Al2O3 ACH, Al2O3 AlCl3, MMW and H MW DADMAC, and L
MW Epi-DMA) (test 5). Req. 57. Appellant describes “side-by-side” comparisons
in the Specification Figure 11 tests “6-10 [sic 7-10]” as comparisons between
processes using compositions of ACH and LMW DADMAC (test 7, ACH/DAD)
as well as a composition of AlCl3 and either LMW polyEpi-DMA (test 8,
AlCl/Epi) or LMW DADMAC (test 9, AlCl/DAD) each with a process using “CV
1725” (Al2O3 ACH, Al2O3 AlCl3, M MW and H MW polyDADMAC, and L MW,
M MW and H MW Epi-DMA) (test 10). Req. 57.
(3)
(i)
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Upon consideration of the evidence in Hill I Declaration Table 2 as further
explained by Appellant, we are not persuaded by Appellant’s contentions that we
erred in our analysis on which we based our findings that there is no side-by-side
comparison of a claimed process and a process of Hassick wherein the processes
differ solely in the molecular weight of the AmP employed, which is the closest
prior art, thus reflecting the thrust of the ground of rejection. Dec. 36; see Dec.
32-33, 35-37.
We find that as Appellant admits, tested processes using compositions
containing AlCl3 or PAC alone (Specification Figure 9 tests 5, 6, 8, 9, 11, 12),
combined only with either “Epi” or “DAD” (Specification Figure 10 tests 3, 8, and
9, and Specification Figure 11 tests 3, 4, 8, and 9), and combined with multiple
ingredients in “CV1703,” “CV1703 with LMW DAD” and “CV 1725”
(Specification Figure 9 tests 1, 7, and 13, and Specification Figure 11 tests 5 and
10) are all based on US Patent 4,746,457 to Hassick (‘457) and not on Hassick
‘039 relied on in the ground of rejection. Req. 56-58, 59 (“aluminum chloride
(Hassick ‘457)”), 63 (comparisons involving aluminum chloride represent Hassick
‘457), 63-64 (comparisons involving aluminum chloride represent Hassick ‘457).
See above pp. 30-33. Thus, we find again here that comparisons based on these
tests do not represent Hassick ‘039, the closest prior art, which would not have
taught compositions containing aluminum chloride or polyaluminum chloride, and
accordingly, the comparisons do not reflect the thrust of the ground of rejection
based on Hassick ‘039 alone. Dec. 32-34.
We find that the only alleged “side-by-side” comparisons which do not
include processes using compositions containing AlCl3 or polyaluminum chloride,
are Specification Figure 10 tests 1 (ACH and LMW polyEpi-DMA) and 2 (ACH
and LMW polyEpi-DMA) with test 5 (“CV 1777” (Al2O3, ACH, and M MW and
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H MW polyDADMAC)). In this respect, we find that Hassick ‘039 would not
have taught compositions containing Al2O3. See above pp. 28-29.
However, we find the Specification Figure 10 tests 1 and 5 do not constitute
a side-by-side composition because, among other things, “CV 1777” does not
contain a “polyEpi-DMA” ingredient. We further find the Specification Figure 10
tests 2 and 5 do not constitute a side-by-side comparison because of the multiple
differences in ingredients between the two component composition of test 2 and
the multi-ingredient component “CV 1777” of test 5 which contains Al2O3 and two
different MW polyDADMAC ingredients.
We find that the other compositions based on tests containing AlCl3 or PAC
alone, combined only with either “Epi” or “DAD,” and combined with multiple
ingredients in “CV” compositions also do not constitute side-by-side comparisons
because of, among other things, the multiple differences in ingredients in the “CV”
compositions.
We further find the tests, such as those using the multi-ingredient “CV”
compositions, cannot be combined for other comparisons than those alleged by
Appellant because of the differences in the raw water in the different test locations,
even if it is shown that the test protocols are otherwise the same.
Even if there was credible evidence that the effect of the H MW
polyDADMAC ingredient in the multi-ingredient “CV” compositions, which
contain ACH but not AlCl3 or polyaluminum chloride, was not obscured by the
other ingredients, the result would reflect the teachings to use the commercial
H MW polyDADMAC with ACH in Hassick ‘039 which is the closest prior art.
See above pp. 25-28.
Thus, we remain of the opinion the “direct” evidence in the Hill I
Declaration Table 2 contains no side-by-side comparison of a claimed process and
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a process of Hassick ‘039, which is the closest prior art, that differs solely in the
molecular weight of the AmP employed, thus reflecting the thrust of the ground of
rejection.14 Dec. 35-37, citing Peterson, 315 F.3d at 1330-31; Baxter Travenol
Labs., 952 F.2d at 392; Burckel, 592 F.2d 1175, 1179-80 (CCPA 1979); Hoch,
428 F.2d 1341, 1343-44 (CCPA 1970); Dunn, 349 F.2d 433, 439 (CCPA 1965).
We are not persuaded the comparisons are “side-by-side” as alleged by
Appellant’s contention that “there is nothing in Hassick which would limit to
component combination; therefore, there is nothing in Hassick which would
eliminate Appellant’s more complex and optimal blend chemistries from
comparison to Hassick when the HMW AmP is replaced by a LMW AmP in a
combination comprising ACH.” Req. 62; see also above p. 31, quoiting Req. 56
(“optimal chemistries of the instant claims”). Appellant thus admits that the multi-
ingredient “CV” compositions are “complex and optimal” for the particular raw
water at the test location but the one and two ingredient compositions are not.
Indeed, there is no comparison based on tests which differ simply in that an
“HMW AmP is replaced by a LMW AmP in a combination comprising ACH.”
(ii)
We find again here the evidence in the Hill I Declaration Table 2 does not
reliably establish the claimed processes encompassed by claims 1, 2, 56 and 75
unexpectedly attain a lower NTU when considered in light of the teachings of
Hassick because of a lack of a side-by-side comparison. See Dec. 35-37. We also
remain unpersuaded “that Declarant Hill’s statistical analysis of all of the tested
processes representing the claimed processes establishes that the claimed processes
surprisingly and unexpectedly produce water with lower final settled turbidity vis-

14 We have not considered Appellant’s bare assertions that “Specification
Examples 25 and 27 . . . [provide] further side-by-side testing.” Req. 61.
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à-vis all of the tested processes selected to represent Hassick.” Dec. 35-36, citing
App. Br. 22; Hill I. Decl. ¶ 15. In this respect, we found “[t]he fact that Declarant
Hill’s statistical analysis encompasses all of the tests selected to represent Hassick,
including those containing only an aluminum polymer, establishes that the analysis
results do not reliably establish a difference between the claimed processes of
claims 1, 2, 56, and 75 and Hassick’s processes relied on by the Examiner, which
is the thrust of the ground of rejection.” Dec. 37. See below pp. 44-47.
We are also not persuaded that we erred in these respects in our original
Decision by Appellant’s contentions based on Hassick’s teachings of synergistic
compositions of a ACH and an AmP, and on Appellant’s assertions that Hassick
teaches “significantly improved results by using ACH alone,” and that “[i]n strong
contrast to Hassick, Appellant obtains synergy, as demonstrated.” Req. 63-64; see
also Req. 57-58 (“In all cases, [in Figures 9, 10 and 11,] the chemistry comprising
HMW significantly outperforms either the salt or the ACH alone; therein, synergy
of the instant claims is demonstrated.”); Req. 90-91. See above pp. 6-11.
Indeed, Appellant does not contest our finding that the scope of Declarant
Hill’s statistical analysis affects the reliability of that analysis. Furthermore, as
was the case above, Appellant does not here provide analysis establishing that the
claimed “CV” compositions are synergistic. See above pp. 7-10, citing Merck v.
Biocraft, 874 F.2d at 808. See above pp. 7-12. Appellant also points to “three
other statistical tests” in the Hill II Declaration15 which are directed to evidence
based on Kigel but does not explain the relevance of the tests to the evidence in
Hill I Declaration based on Hassick. Req. 61. See Hill II Decl., e.g.,
¶ 5. See Dec. 40; Req. 91-92.

15 Declaration under 37 C.F.R. § 1.132 of Dr. Robert Hill executed August 22,
2006 (Hill II Declaration). App. Br. 23 n.23. See Dec. 40.
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We are also not persuaded that the evidence in Hill I Declaration Table 2
demonstrates unexpected results by Appellant’s contentions that Declarant Stoll16
attests that “Applicant’s test results have demonstrated Unexpected Results (and
hence allowability) as to these chemistries compared to Hassick.” Req. 61, quoting
Stoll Decl. ¶ 17 (pt. 28); see also Req. 62. We find Declarant Stoll does not
support the statement with evidence or citation to evidence including the Hill I
Declaration, and thus Declarant Stoll’s opinion is entitled to little, if any, weight.
Stoll Decl. ¶ 17. See, e.g., Am. Acad. Of Sci. Tech. Ctr., 367 F.3d 1359, 1368 (Fed.
Cir. 2004) (“[T]he Board is entitled to weigh the declarations and conclude that the
lack of factual corroboration warrants discounting the opinions expressed in the
declarations.” (citations omitted)); In re Etter, 756 F.2d 852, 860 (Fed. Cir. 1985)
(en banc) (opinion affidavit asserting the reference disclosed obsolete technology
was correctly characterized by the board “as merely representing opinion[]
unsupported by facts and thus entitled to little or no weight.” (citations omitted)).
In this respect, Appellant further points to Declarant Stoll’s statement with respect
to Kigel and evidence proffered by Appellant based on a PA, but does not explain
the relevance of the statement to the evidence in the Hill I Declaration based on
Hassick. Req. 61. See Stoll Decl. ¶ 18.
(iii)
Appellant contends we erred in determining “the evidence [in the Hill I
Declaration] considered here does not extend to claim 3 which specifies the
molecular weight of the cationic ammonium polymer as ‘at least about 5,000,000’
because there is no tested composition contains a cationic ammonium polymer
falling within the claimed molecular weight range. Thus, the evidence is not

16 Declaration under 37 C.F.R. § 1.132 of James W. Stoll (Stoll Declaration),
executed December 12, 2005. App. Br. 26 n.32. See Dec. 55.
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commensurate in scope with claim 3 and Hassick.” Dec. 37; Req. 28, 64-65 (pt.
33).
However, Appellant does not present arguments in these respects, instead
pointing to several declarations without explaining the relevance of the evidence in
the declarations to the evidence in the Hill I Declaration Table 2 and claim 3. Req.
64-65.
d. “Indirect” Comparisons
We are not convinced by Appellant’s contentions that we erred in
determining the evidence in Hill I Declaration ¶ 10 and Table 1d, as explained by
Declarant Hill and Appellant, does not support Appellant’s contention that the
evidence establishes “indirect” comparisons between the claimed methods and
those of Hassick. Dec. 38-40, quoting Hill I Decl. ¶ 10; Req. 28-29, 65-66 (pts.
34-36).
We found, among other things, the “properties “and “amounts” of the
“HMW DADMAC” and the other DADMAC ingredients used in compositions in
tests 15 through 22 at the “Watuga River” are not identified in Hill I Declaration.
Dec. 38-39. We find the “testing parameters” disclosed at col. 4, ll. 43-51, of
Hassick, citied by Appellant, do not provide evidence of the “properties” and
“amounts” of “HMW DADMAC” and the other DADMAC ingredients used in the
“Watuga River” tests. Req. 65. Thus, we find again here that the credible
evidence of record does not permit the determination whether the processes using
“HMW DADMAC” tested at the “Watuga River” are anticipated by Hassick’s
processes using the commercial H MW DADMAC having a molecular weight of
1,000,000 to 2,000,000. Dec. 38-39. See above pp. 25-28. Appellant’s contention
that Hassick’s Examples which employ flocculant compositions containing the
commercial H MW DADMAC “cannot anticipate claims 1, 2, 56 or 75” as
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previously argued, does not address the issue. Req. 65.
Appellant does not explain how the cited evidence in Specification Figures
1-7 and 9-11 and Declarant Stoll’s attestations establish that evidence in Hill I
Declaration Table 1d constitutes reliable “indirect” comparisons between the
claimed methods and those of Hassick. Req. 66, citing Specification Figures 1-7
and 9-11, and Stoll Decl. ¶ 17; see Dec. 39-40.
2. Hill II Declaration: 17 Kigel –claims 4 and 76
We initially consider the evidence in the Haase II Declaration18 and the
Audrey Haase Declaration19 in light of Appellant’s explanation of the relevance of
the evidence with respect to the Hill II Declaration. Dec. 40 n.16; Req. 29, 66-67
(pt. 37). Appellant contends the results of jar tests on raw water conducted at
Texas City (Brazos River), Trinity River, and Lake Houston show “[u]nexpected
[r]esults of side-by-side testing of . . . a cationic AmP, of molecular weight of
about greater than 5,000,000 compared to one of about 350,000; both in
combination with ACH” and were given to Declarant Hill for statistical analysis.
Req. 67.
We find the Haase II Declaration and the Audrey Haase Declaration provide
the same Water Production Jar Test Reports for compositions containing CV1120
alone, CV1120 and CV5140, and CV1120 and CV5140LX for Texas City (3
reports), Trinity River (6 reports), and Lake Houston (4 reports) which are
included in the lists of a large number of jar tests for each of the compositions at

17 See above note 15.
18 Declaration under 37 C.F.R. § 1.132 of Richard Haase, executed August 22,
2006 (Haase II Declaration). App. Br. 35 n.58; see App. Br. 23 n.24.
19 Declaration under 37 C.F.R. § 1.132 of Audrey Haase, executed August 22,
2006.
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these locations in Hill II Declaration Table 1. Haase II Decl. ¶ 8, Exh. A;20 Audrey
Haase Decl. ¶ 4, Exh. A; Hill II Decl. ¶ 4; see Dec. 41. We find the Water
Production Jar Test Reports for the other jar tests listed in Hill II Declaration Table
1 have not been adduced. We find two additional Water Production Jar Test
Reports for claimed compositions containing CV1120 and CV5140 at Texas City
show a final NTU of 11.6 and 15.2, respectively, and are not included in the list of
jar tests for that location in Hill II Declaration Table 1. Haase II Decl. Exhibit A
and Audrey Haase Decl. Exhibit A. We find the highest NTU reported in Hill II
Declaration Table 1 for a claimed composition containing CV1120 and CV5140 at
Texas City is 5.6.
Thus, on this record, we find that Appellant provided the most favorable
results obtained with claimed compositions containing CV1120 and CV5140 to
Declarant Hill.
Appellant does not contest our finding “that CV5140 has a molecular weight
of ‘near 8 million.’” Dec. 42. We find that as Appellant contends, “CV 5140LX[]
[is] a polyacrylamide having a molecular weight of about 350,000 ranging from
about 200,000 to about 500,000” as attested in the Richard Haase Declaration
executed December 1, 2007.21 Req. 30, 67 (pt. 38); Richard Haase Decl. executed
December 1, 2007, ¶ 5.
Appellant does not contest our finding that “the comparison of tests using
CV1120[22] alone with the claimed flocculating agents containing CV1120 and

20 The Haase II Declaration switched Exhibits A and B. Cf. Haase II Decl. ¶¶ 6
and 8.
21 See Dec. 45 n.17.
22 “We find that CV 1120 is described in the Specification as “aluminum
chlorohydrate” which is “aluminum pentahydroxychloride.” Spec. 26:23.” Dec.
42.
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CV5140 does not reflect the ground of rejection of claims 4 and 76 based on the
combination of Kigel and Simmsgeiger.” Dec. 42-43. See Dec. 19-21, 23-25; see
above pp. 17, 19, 21-22 (“We again note that Appellant does not contest our
findings with respect to Kigel and Simmsgeiger. Dec. 23-25.”).
We are not persuaded by Appellant’s contentions based on Declarant Stoll’s
attestations with respect to Kigel alone that we erred in determining, based only on
the favorable results provided to Declarant Hill, “the evidence in the Hill II
Declaration establishes no more than the result expected by one of ordinary skill in
the art from the teachings of Kigel and Simmsgeiger, and thus constitutes evidence
of obviousness.” Dec. 44; Req. 67-69 (pts. 39, 40), quoting Stoll Decl. ¶ 18.
Indeed, Appellant does not contest our findings that “one of ordinary skill in the art
would have been aware of Simmsgeiger’s teachings of a preferred range of from
about 6,000,000 to 18,000,000 for an effective polyacrylamide, and that two keys
for an effective polyacrylamide flocculant are charge density and molecular weight
. . . [and] would have reasonably expected the higher molecular weight
polyacrylamide to obtain a lower NTU than the lower molecular weight
polyacrylamide as set forth in the ground of rejection.” Dec. 44.
3. Haase Declaration:23 Kigel – claims 4 and 76
On the same basis, we are also not persuaded by Appellant’s contentions,
based on Declarant Stoll’s attestations relied on with respect to the Hill II
Declaration, that we erred in determining “that the evidence in the Haase
Declaration establishes no more than the expected result from the teachings of
Kigel and Simmsgeiger, which is evidence of obviousness.” Dec. 46; Req. 69 (pts.
41, 42), citing Req. 67-69.

23 Declaration under 37 C.F.R. § 1.132 of Richard Haase executed December 1,
2007. App. Br. 23 n.25. See Dec. 45 n.17.
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4. Hill I Declaration: Kigel – claims 4 and 76
We “fail[ed] to find ‘CV 1791’ defined in the Specification. See Spec. Fig.
8.” Dec. 49. Appellant contends that “CV 1791” is a typo and is “CV 1798.”
Req. 31, 69 (pt. 43), citing Haase Decl. III ¶ 5 m.24 On this record, we find “CV
1798” is defined in Specification Figure 8 as having a mixture of Al2O3 ACH, M,
H MW DADMAC, and LMW Epi-DMA.
We found “‘CV1777’ is defined in Specification Figure 8 as ‘CV 1760 (old
1777)’ having a mixture of Al2O3 ACH and M, H MW DADMAC.” Dec. 49. See
above pp. 27-28. Appellant contends we erred in finding “CV1777” contains
“Al2O3” because this ingredient is “not a component, as is known in the art.” Req.
31, 70 (pt. 44). We remain of the view that “CV1777” contains “Al2O3” because
Appellant has not established otherwise. See above pp. 27-28.
We are not convinced by Appellant that Declarant Stoll’s attestations
demonstrate we erred in finding “the evidence in Hill I Declaration Tables 3 and 3a
does not support Appellant’s contention of an ‘indirect’ comparison and thus, the
evidence in the Hill I Declaration is entitled to little, if any, weight.” Dec. 50; Req.
31-32, 70-71 (pt. 45), citing Stoll Decl. ¶¶ 5-7. We did so based on the findings
that “neither Appellant nor Declarant Hill provide an explanation establishing that
the asserted “indirect” comparisons provide a reliable indication of the
performance of the claimed tests and Hassick processes which are conducted under
different conditions . . . [or] adduce evidence explaining the difference between the
tests 33, 33, and 34 and the processes of Examples 33 and 34 with respect to the
differences in “chem. addition” in Table 3, or establishing the molecular weight of
the polyacrylamides used by Kigel which are commercially available under the

24 Declaration under 37 C.F.R. § 1.132 of Richard Haase, executed August 31,
2004 (Haase III Declaration). App. Br. 35 n.59. See Dec. 59 n. 26.
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trademarks “MAGNIFLOC” and “SUPERFLOC.” Dec. 49; see Dec. 46-49.
Appellant does not explain how Declarant Stoll’s attestations with respect to
“proper testing protocol” in conducting jar tests in various locations leading to the
contention the “comparison of testing results is accurate . . . applies to Kigel,”
establishes that evidence in Hill I Declaration Table 3 and 3a constitutes reliable
“indirect” comparisons between the claimed methods and those of Kigel. Stoll
Decl. ¶¶ 5-7. Req. 70-71.
5. Specification Examples and Figures – Claims 1-3, 56, and 75
We determined Appellant did not explain how Specification Examples 25
and 27 and Specification Figures 10-12 establish the criticality of the molecular
weight ranges for AmP set forth in the claims, and that this evidence does not
establish unexpected results with respect to Hassick. Dec. 50-51. See above n. 14.
Appellant now contends that evidence in the Specification provides “side-
by-side” comparisons of tests using compositions of “ACH and HMW
polyDADMAC” with “ACH and LMW poly Epi-DMA” in tests 1-5 of Figure 10;
“side-by-side” comparisons of “ACH and HMW poly-Epi-DMA” with “ACH and
LMW polyEpi-DMA” and “ACH and LMW polyDADMAC” in tests 6-10 of
Figure 10, and in tests 1-5 and 6-10 of Figure 11; comparisons of ACH and
medium (M) or high (H) MW AmP in Figure 12; and comparisons of M MW and
H MW in Examples 25 and 27. Appellant contends the results are unexpected as
established by Declarant Stoll. Req. 32, 71-72 (pt. 46), citing Stoll Decl. as
explained at Req. 60-61.
We considered the analysis of comparisons of tests 1-3, 5 and 8-10 of
Specification Figure 10 and of tests 1-5 and 7-10 of Specification Figure 11 in Hill
I Declaration Tables 2 and 2a, and the attestations of Declarant Stoll in connection
therewith. See above pp. 25-38. We particularly noted that the multi-component
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CV1777, CV1787, CV1703, and CV1725 are characterized as “optimal
chemistries” containing ingredients, including Al2O3 in addition to ACH and a H
MW DADMAC or a H MW Epi-DMA (see above pp. 29-30, 30-33, 34-36); and
that CV1703 and CV1725 and other tested compositions containing AlCl3
represent Hassick ‘457 and not Hassick ‘039 (see above p. 32). We find the same
analysis pertains to the evidence of additional comparisons provided by the
compositions in tests 4, 6 and 7 of Figure 10 and test 6 of Figure 11 not included in
Hill I Declaration Table 2.
We find that Specification Figure 12 reports 9 comparisons of multi-
ingredient “CV” compositions, each described in Specification Figure 8,
containing ACH and M MW AmP or H MW AmP along with 2 to 5 additional
ingredients including at least one AmP ingredient of different molecular weight
which can be a different type of AmP. See Spec. 52:5-6. We find the multi-
ingredient “CV” can be characterized as “optimal” chemical blends.
We find the comparisons in Example 25 are based on the multi-ingredient
CV1703 and CV1703 modified with respect to one of the AmP components, all
three containing AlCl3 and thus representing Hassick ‘457. See above pp. 28-29,
32. We find the comparisons in Example 27 are based on the multi-ingredient
CV1787 and CV1787 modified with respect to one of the AmP components, all
three containing Al2O3 which is not taught by Hassick ‘039. See above pp. 28, 32.
On this record, we are no more persuaded here that the evidence in
Specification Examples 25 and 27 and Figure 10-12 contain a side-by-side
comparison(s) of a claimed process and a process of Hassick ‘039, which is the
closest prior art, that differs solely in the molecular weight of the AmP employed,
thus reflecting the thrust of the ground of rejection, than we were with respect to
the evidence in Hill I Declaration Table 2 and the Stoll Declaration. See above pp.
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33-38.
6. Practicality of Unexpected Results:
Gibson,25 Pasel,26 and Sisson27 Affidavits
We did not agree with Appellant that the disclosure at §§ 031-039 (page 8,
line 23, to page 11, line 19), Examples 1-41 and Exhibits 1-12 in the Specification
and evidence in the Gibson, Pasel, and Sisson Affidavits explain the results of the
“direct” comparisons in the Hill I and the Haase Declaration, and establish that the
results based on “indirect” comparisons in the Hill I and II Declarations are
probative. Dec. 51; see Dec. 51-52.
Appellant relies on previous arguments with respect to practicality and
results which we found unpersuasive. Req. 32, 72-73 (pt. 47), citing Req. 59-61,
67-68, 68, 71-72; Req. 93. See above pp. 38, 40, 41-43.
We also found unpersuasive Appellant’s previous reliance on the Stoll
Declaration. See above pp. 35-36, 38, 41-42.
D. Commensurate in Scope
E. Statistical Evaluation
(Claims 1-4, 56, 75, and 76)
1. Hill III Declaration28
Appellant contends we erred in “find[ing] that the results in the Hill III
Declaration establish that the molecular weight of all of flocculant agents

25 Affidavit under 37 C.F.R. § 1.132 of Billy L. Gibson directed to Serial No.
08/931,167, executed March 30, 1999. App. Br. 24 n.27. See Dec. 51 n.18.
26 Affidavit under 37 C.F.R. § 1.132 of Nancy Pasel directed to Serial No.
08/931,167, executed June 28, 1999. App. Br. 24 n.28. See Dec. 51 n.19.
27 Affidavit under 37 C.F.R. § 1.132 of Don Sisson directed to Serial No.
08/931,l67, executed “‘12th’ day of ____, 1999.” App. Br. 24 n.29. See Dec. 51
n.20.
28 Declaration under 37 C.F.R. § 1.132 of Dr. Robert Hill executed November 16,
2007 (Hill III Declaration). App. Br. 25 n.31. See Dec. 52 n.21.
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employed in a particular process directly affects the NTU results,” and in “not
find[ing] from the results that molecular weight is the sole determinate in NTU
results.” Dec. 53-54; see Dec. 52-55. Req. 33-34, 73-75 (pt. 48); Req. 94. We
considered the jar tests reported in Hill III Declaration Exhibit D, including the
“variety of ‘CV’ compositions” containing only a single AP and containing multi-
ingredients that include more than one AmP and/or PA along with an AP; the two
ingredient compositions which are not identified with a “CV” designation; and the
limited process parameters “total dosage, HMW/AL ratios, and ‘Jar test mixing
(min/rpm).’” Dec. 53-54, citing Hill III Decl. ¶¶ 4 and 6. We also found there is
no credible evidence in the Hill III Declaration that NTU results are not affected by
the ratio of AP to polyDADMAC shown to be result effective in anticipatory
Examples 15-17 and 59-64 using the commercial H MW polyDADMAC disclosed
in Hassick ‘039, and by the particular AP, AmP and PA and the other ingredients
as shown in Hassick ‘039 and Kigel (Test 2 and Table 3). Dec. 54.
We find the inclusion of jar tests using compositions containing AlCl3
representing Hassick ‘457, which is not relied on, does not affect our consideration
of the evidence in the Hill III Declaration.
Thus, upon reconsideration of the evidence in Hill III Declaration Table D,
we remain of the opinion “the evidence in the Hill III Declaration does not support
Appellant’s contention that differences in process variables such as, ‘e.g. type of
polymer, ratios, mixing times or settling time,’ do not need to be taken into account
in comparing the claimed processes with the processes disclosed by Hassick [‘039]
and the combination of Kigel and Simmsgeiger.” Dec. 54-55.
We are not convinced otherwise by Appellant’s contentions. Req. 74-75,
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citing Hill III Decl. ¶ 4, Exhibit B, Haase Decl. executed December 1, 2007.29 We
find attached to the Haase Declaration executed December 1, 2007, excerpts from
Doane.30 According to Appellant, statistics provide “a direct and statistically valid
determinant of randomness in the data,” and the lack of randomness reveals a
cause and effect relationship. Req. 74-75, citing Hill III Decl. ¶ 5, Exhibit B,
Haase Decl. executed December 1, 2007. Appellant contends “that to INFER
results from data which has as much VARIABILITY as does the Hassick data is
simply poor decision science.” Req. 75. See Req. 96-99.
We found that the jar tests used in Hill III Declaration exhibit considerable
randomness even when considered solely on the variability of single AP and
multiple AP, AmP and/or PA ingredient(s) between and within the “CV”
compositions and the two ingredient compositions used in the jar tests. Appellant
has not explained how Declarant Hill’s statistical analysis factors out that
randomness to establish a cause-and-effect based on the molecular weight of a
single AmP or PA falling within the claims.
On this record, we are of the opinion that Appellant’s approach to
contending with multiple variables in tested compositions and process parameters
in the reported jar tests with statistical analysis is simply not a substitute for a
straightforward side-by-side comparison of jar tests involving a claimed
composition and a prior art composition tested in the same manner, thus differing
solely in a variable that reflects the thrust of the ground of rejection. See, e.g.,
Burckel, 592 F.2d at 1179-80 (the claimed subject matter must be compared with
the closest prior art in a manner which addresses the thrust of the rejection); Dunn,

29 See above note 20.
30 DAVID P. DOANE & LORI E. SEWARD, APPLIED STATISTICS IN BUSINESS AND
ECONOMICS (McGraw-Hill/Irwin 2007). See App. Br. n.34.
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349 F.2d at 439 (“[W]e do not feel it an unreasonable burden on appellants to
require comparative examples relied on for non-obviousness to be truly
comparative. The cause and effect sought to be proven is lost here in the welter of
unfixed variables.” (emphasis supplied)).
2. Stoll Declaration31
Appellant contends we erred in finding that “[a]s Declarant Stoll attests, one
of ordinary in the art would have been able to determine a trend in the
effectiveness obtained by increasing the molecular weight of the [polyDADMAC]
from the teachings of Hassick without undue experimentation. Thus, such a result
is indicative of the obviousness of claims 1-3, 56, and 75 over Hassick.” Dec.
55-56; Req. 34, 75-76 (pt. 49). In this respect, we did not misquote Stoll
Declaration ¶ 16. Dec. 55; Req. 76; Req. 94-95. We relied on Declarant Stoll’s
attestation that “one of ordinary skill in the art would be able to determine a trend
in . . . exemplified data which would allow the artisan to reasonably extend the
probative value thereof to other” similar compositions with respect to the facts and
inferences that one of ordinary skill in the art would have found in Hassick.
Appellant’s position that our findings with respect to Hassick is not convincing, as
indeed, Hassick’s examples using the commercial H MW polyDADMAC are
anticipatory and Appellant has not established that Hassick does not describe a
synergistic composition of ACH with AmP. Req. 75-76. See above pp. 6-15, 16-
24.
Appellant contends we erred in the same manner in finding that “[a]s
Declarant Stoll attests, one of ordinary skill in the art would have been able to
determine a trend in the effectiveness obtained by increasing the molecular weight

31 See above note 16.
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of polyacrylamides based on the teachings of Simmsgeiger without undue
experimentation. Thus, such a result is indicative of the obviousness of claims 4
and 76 over the combination of Kigel and Simmsgeiger.” Dec. 56; Req. 77-78 (pt.
49). Appellant’s contention that Declarant Stoll addresses the combination of
Kigel and Simmsgeiger is unsupported. Req. 77, quoting Stoll Decl. ¶ 18 a-i, k
and n. We find Declarant Stoll does not mention Simmsgeiger alone or in
combination with Kigel. Stoll Decl. ¶ 18.
F. Nier and Hassick
(Claim 22)
Appellant contends we erred in finding “the combination [of Nier and
Hassick] clearly establishes the common relationship between Nier and Hassick
with respect to aluminum containing acidic flocculants and long chain
diallyldimethylammonium chloride in addressing turbidity in water, thus leading
one of ordinary skill in the [sic, art] to use Hassick’s diallyl-dimethylammonium
chloride in Nier’s process.” Dec. 58; see Dec. 56-59; Req. 35 (pt. 50). Appellant
does not support this contention. Req. 78-79 (pt. 50). Appellant further contends
we erred in finding “the combination of the similar teachings of Nier and Hassick
would have led one of ordinary skill in the art to use Hassick’s higher molecular
weight dially-dimethylammonium chloride polymers, including the commercially
available polymer with a molecular weight distribution of 1,000,000 to 2,000,000,
in Nier’s process.” Dec. 58; Req. 78-79 (pt. 50). Appellant contends “there is no
reason for anyone of ordinary skill in the art to use any polymer from Hassick to
develop instant claim 22 in the removal of algae from a water.” Req. 78. We
considered a similar contention and are not persuaded otherwise here. See above
pp. 15-16; Req. 45.
Appellant further contends “claim 22 is for the use of an AmP alone” and
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“Hassick obtains his worst results in using an AmP alone,” thus teaching away
from claim 22. Req. 79, citing Req. 39; See Req. 100-103. The difficulty with
Appellant’s position is that Nier discloses the use of a polymer flocculant aid
which can be a DADMAC polymer. See above pp. 15-16, note 8. Appellant’s
contention that the arguments advanced with respect to Hassick’s teaching of
synergistic compositions of ACH and AmP apply here does not address whether
one of ordinary skill in the art would have used Hassick’s commercial H MW
polyDADMAC as the polymer flocculant aid in Nier’s processes. See above
pp. 6-11, 16-18.
H. Copying by Other
Appellant does not contend we misapprehended facts in the Taylor
Declaration,32 the Audrey Haase Declaration,33 Haase I Declaration, 34 at ¶ 4 of the
Haase II Declaration,35 and at ¶ 5 of the Haase III Declaration.36 Dec. 59-61; Req.
35, 79 (pt. 51). Appellant contends that testimony at ¶¶ 20-21 of the Audrey L.
Haase Affidavit,37 at ¶¶ 20-21 of the Eileen Taylor Affidavit,38 at ¶ 4 of the Haase
II Declaration, and at ¶ 5 of the Haase III Declaration is evidence of copying of

32 Declaration under 37 C.F.R. § 1.132 of Eileen Taylor, executed September 6,
2004. App. Br. 35 n.56. See Dec. 59.
33 Declaration under 37 C.F.R. § 1.132 of Audrey Haase, executed August 31,
2004 (Audrey Haase Declaration). App. Br. 35 n.60; see App. Br. 23 n.24. See
Dec. 59.
34 Declaration under 37 C.F.R. § 1.132 of Richard Haase, executed June 10, 2004
(Haase I Declaration). App. Br. 35 n.57.
35 See above note 33.
36 See above note 35.
37 Affidavit under 37 C.F.R. § 1.132 of Audrey L. Haase, executed April 15, 2003
(¶¶ 20-21). App. Br. 12 n.12. See Dec. 59.
38 Affidavit under 37 C.F.R. § 1.132 of Eileen T. Taylor, executed April 11, 2003
(¶ 12). App. Br. 12 n.14. See Dec. 59.
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others, but does not explain why this is so. Req. 79. See Req. 103-104.39 We
remain of the opinion that the cited testimony in the Haase II and Haase III
Declarations does not provide credible evidence of copying by others. Dec. 59-60,
60-61.
We find the cited testimony of Affiant Audrey L. Haase is directed to events
involving the Haase ‘690 patent and WPO 00/09453 prior to the effective filing
date of the present Application, does not refer to a claimed invention in the present
Application, and does not state the facts underlying the attestation “I have
knowledge that the pending claims in the subject application [US 09/675695] are
being violated at the following water purification facilities.” Audrey L. Haase Aff.
¶¶ 19-21. See above note 2.
We find the cited testimony of Affiant Eileen Taylor is directed to events
prior to the effective filing date of the present Application, does not refer to a
claimed invention in the present Application, and does not state the facts
underlying the attestation “I have personal knowledge that the pending claims in
the subject application [US 09/675695] are being practiced at the following water
purification facilities.” Eileen Taylor Aff. ¶¶ 19-21. See above note 2.
We are of the opinion that the cited testimony in the Audrey L. Haase and
Eileen Taylor Affidavits does not provide credible evidence of copying by others.
See, e.g., In re Thompson, 545 F.2d 1290, 1295 (CCPA 1976) (affidavit related to
secondary consideration of nonobviousness, notably copying, “sets forth no
specifics and falls far short of constituting probative evidence.”).
Appellant contends, with respect to our “fail[ure] to find in the Taylor,
Haase I, Haase II, Haase III, and Audrey Haase Declarations any testimonial

39 We have not considered Appellant’s contentions with respect to issues in the
“legal action to enforce the ‘690” patent in the district court. See above p. 2.
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evidence which identifies the molecular weight for a high molecular weight
polyacrylamide,” that ¶ 5 of the Richard Haase Declaration executed December 1,
2007, and “CV 5120 P” in Specification Example 34 describe high molecular
weight PA polymers. Dec. 60; Req. 35, 79 (pt. 52). Appellant does not explain
how this evidence supports the cited evidence in the Audrey L. Haase and Eileen
Taylor affidavits and the Haase II and Haase III Declarations.
I. Long Felt Need
Appellant contends we misapprehended the evidence in the Atkins
Declaration:40
We find that Declarant Atkins attests that it is his “professional
opinion that a coagulation technology which” addresses the process
goals in clarifying raw water identified by Appellant “would address a
long felt industry need” at “many surface water purification facilities.”
Atkins Decl. ¶¶ 9-10. We fail to find in the Atkins Declaration any
evidence with respect to the claimed processes encompassed by the
appealed claims; indeed, Declarant Atkins’ opinion testimony does
not cite to even a single claim limitation which is responsible for the
alleged achievement of the process goals identified by Appellant.
Atkins Decl. ¶¶ 1-10.
Dec. 62; Req. 35, 79-81 (pt. 53). See Req. 104-105. According to Appellant, the
evidence in ¶¶ 9-11 of the Atkins Declaration “both addresses establishment of a
Long Felt Need and that the Long Felt need has not been addressed by others.”
Req. 80.
We find Appellant has misquoted ¶¶ 10 and 11 of the Atkins Declaration.
Req. 80. In ¶ 10 of the Atkins Declaration, “paragraph 9” is stated, not “paragraph
11;” and in ¶ 11 of the Atkins Declaration, “paragraph 9” is stated, not “paragraphs
11 and 12.”

40 Declaration under 37 C.F.R. § 1.132 of Blake Atkins, executed September 9,
2004. App. Br. 36 n.65. See Dec. 61.
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We again find ¶¶ 9-10 and now find ¶ 11 of the Atkins Declaration do not
adduce “any evidence with respect to the claimed processes encompassed by the
appealed claims.” Dec. 62. We find that Declarant Atkins specifies stringent
performance parameters or process goals of “provides coagulation in all types of
raw waters, allows a settled turbidity of 1 to 2 NTU in combination with a filtered
turbidity of less than 0.10 NTU, leaves no soluble aluminum ion in the water . . .
without the requirement of pre-oxidation” to “address a long felt industry need.”
Atkins Decl. ¶ 9.
Appellant contends “the instant claims answer said Long Felt Needs” as
demonstrated by Specification Examples 1-41 and Figures 1-7 and 9-12 which
show “throughout a settled NTU result of less than 1.0, which allows for a filtered
NTU of less than 0.10 (ref. instant Specification [page 8, line 23 to page 10, line
10]), along with measured aluminum results are less than 0.05 mg/L.” Req. 81.
We find that the disclosure at page 8, line 23 to page 10, line 10, in the
“Description Of The Related Art” section of the Specification addresses “[t]he
timing of the instant invention.”
We find Appellant discloses in the Specification that
[t]he invention herein disclosed is valuable for all raw waters. It
should be understood, however, that not all possible individual
combinations of AP and AmP (See Figure 9 for various illustrated CV
products) would perform equally, optimally and/or successfully in all
raw waters. As individuals have individual fingerprints, raw waters
are chemically unique in their respective contaminants, constituents
and/or properties. Thus, water technologists know that testing is
required to determine the optimal and successful coagulant for a
specific raw-water-equipment combination.
Spec. 13:3-9. Appellant discloses “[t]he invention is directed toward producing
water that contains less than 0.05 mg/L of aluminum.” Spec. 17:15-16. We find
Appellant discloses the effect of mixing on NTU results. Spec., e.g., 48:28 to 49:3,
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Fig. 3, Test 3.
We are of the opinion the disclosure in the Specification, including the
illustrative embodiments, does not demonstrate that the disclosed processes
invariably results in Declarant Atkins’ stringent performance parameters or process
goals to “address a long felt industry need.” Nor does the disclosure in the
Specification, including the illustrative embodiments, limit claims 1-4, 22, 56, 75
and 76, which are drawn to processes of liquid-solids separation or treating in/of
raw water or waste water by chemical treatment and a process of removing algae
from raw water by chemical treatment, to the specific stringent performance
parameters or process goals. Indeed, we interpreted claims 1-4, 56, 75 and 76 to
limit the specified processes only with respect to “reduce[ing] to any extent,
however small, at least one of total suspended solids, turbidity, color, and TOC of
the raw water, to form a separated water,” and claim 22 to limit the specified
processes to only with respect to “reduce[ing] to any extent, however small, the
amount of algae to form a separated water.” Dec. 5-9. We further find no basis in
the language of claims 1-4, 22, 56, 75 and 76 or in the disclosure in the
Specification on which to read the illustrative embodiments relied on by Appellant
as limitations on the processes in these claims. See, e.g., Phillips, 415 F.3d at
1323; Van Geuns, 988 F.2d 1181, 1184-185 (Fed. Cir. 1993); Zletz, 893 F.2d at
321-22. Indeed, Appellant discloses that the results attained with the disclosed
processes depends on the extent of optimization for a specific raw or waste water
and the equipment used, and that soluble aluminum ion can remain in the separated
water.
Accordingly, we remain of the opinion that “the opinion evidence in the
Atkins Declaration does not establish any nexus, that is, a direct connection,
between the claimed processes encompassed by the appealed claims and specific
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long-felt need in the water treatment industry for the claimed processes that was
not solved by others” and “is entitled to little if any weight.” Dec. 61-63.
We considered above Appellant’s contentions that we erred in finding that
Hassick’s illustrative examples using the commercial H MW polyDADMAC
anticipate claims 1, 2, 56, and 75. Dec. 63; Req. 36, 81 (pt. 54).
J. Teaching Away by Hassick (Claims 1-3, 56, and 75)
We considered above Appellant’s contentions that we erred in finding
Hassick’s illustrative examples using the commercial H MW polyDADMAC
anticipate claims 1, 2, 56, and 75 are anticipatory, and do not teach away from the
synergistic compositions containing ACH and polyDADMAC. Dec. 63-64; Req.
36, 81-82 (pt. 55).
K. Teaching Away by Kigel (Claims 4 and 76)
We considered above Appellant’s contentions, based on testimony of
Declarant Stoll, that we erred in finding “Kigel teaches the combination of an AP
and a PA, and Simmsgeiger teaches the use of high molecular weight PA as a
flocculant in clarifying water, and [sic] which teachings would have led one of
ordinary skill in the art to combine the references, thus arriving at the claimed
invention encompassed by claims 4 and 76.” Dec. 64; Req. 36, 82 (pt. 56).
L. Hindsight
We are no more convinced here than before by Appellant’s contentions now
presented that hindsight is involved in the grounds of rejection because Hassick
does not teach the importance of molecular weight, Kigel does not teach molecular
weight, and Hassick and Kigel teach away from the claimed invention. Dec. 64;
Req. 36, 82 (pt. 57); Req. 105-106. Indeed, the statement of each of the grounds of
rejection explains why one of ordinary skill in the art would have been led by the
prior art relied on to the claimed invention encompassed by the claims. See Dec.
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12-16, 17-18, 20-21. See, e.g., In re Rouffet, 149 F.3d 1350, 1358 (Fed. Cir. 1998)
(“hindsight” is inferred when the specific understanding or principal within the
knowledge of one of ordinary skill in the art leading to the modification of the
prior art in order to arrive at appellant’s claimed invention has not been explained).
IV. Conclusion
We have carefully considered Appellant’s Request for Rehearing but we are
unconvinced of error in our Decision as to any ground of rejection.
Accordingly, we have granted Appellant’s Request for Rehearing to the
extent that we have reconsidered our Decision, but we deny the Request with
respect to making any change in our Decision. Accordingly, Appellant’s Request
for Rehearing is DENIED.
No time period for taking any subsequent action in connection with this
appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv) (2011).
DENIED
bar