Ex Parte RE41859 et al

Patent Trial and Appeal Board

May 21, 2015

95001559 (P.T.A.B. May. 21, 2015)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,559 03/01/2011 RE41859 MHS-001RX 7427
51414 7590 05/21/2015
GOODWIN PROCTER LLP
PATENT ADMINISTRATOR
53 STATE STREET
EXCHANGE PLACE
BOSTON, MA 02109-2881
EXAMINER
GELLNER, JEFFREY L
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
05/21/2015 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

COLDHARBOUR MARINE LIMITED
Requester, Respondent

v.

MH SYSTEMS, INC.1
Patent Owner, Appellant
____________________

Appeal 2014-009650
Inter partes Reexamination Control 95/001,559
Patent US RE41,859 E2
Technology Center 3900
____________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 MH Systems, Inc. is the Patent Owner and the real party in interest (Appeal
Brief of Patent Owner (hereinafter "App. Br.") 1).
2 Patent US RE41,859 E (hereinafter "the ’859 patent") issued October 26,
2010 to Husain et al., and is a reissue of U.S. Patent No. 6,761,123 issued
July 13, 2004.
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STATEMENT OF THE CASE
Claims 2–6, 9, 10, 13–17, 19–31, 33–47 and 49–51 of the ’859 patent
stand rejected and are the subject of the present appeal (Appeal Brief
(hereinafter "App. Br.") 2). Claims 50 and 51 were added during the
reexamination while claims 1, 7, 8, 11, 12, 18, 32 and 48 have been canceled
(id.). The Patent Owner appeals under 35 U.S.C. §§ 134(b) and 315 from
the Examiner's rejections with respect to all of the rejected claims (App. Br.
2). In addition to its Appeal Brief and Rebuttal Brief, the Patent Owner also
relies on declaration of co-inventor Mr. Husain and declaration of Dr.
Felbeck in support of patentability. The Requester relies on its Respondent
Brief and declaration of Dr. Rau in support of the Examiner's rejections set
forth in the Right of Appeal Notice (hereinafter "RAN").3 We have
jurisdiction under 35 U.S.C. §§ 134(b) and 315.
We AFFIRM.

THE INVENTION
The ’859 patent is directed to a method and system for killing aquatic
nuisance species (hereinafter "ANS") in a ship's ballast water.
Representative independent claim 2 reads as follows (col. 21, ll. 36–42;
Claims App., claim 2 incorporating the limitations of cancelled parent claim
1):

2. [A method of killing aquatic nuisance species in ship's
ballast water comprising: infusing carbon dioxide into the

3 The Examiner's Answer incorporates the RAN by reference. Hence we cite
to the RAN herein.
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ship's ballast water at a level effective to kill aquatic nuisance
species by hypercapnia; while lowering oxygen in the same
ship's ballast water to a level effective to kill aquatic nuisance
species by hypoxia,] The method according to claim 1 wherein
the infusing is with a gaseous mixture of ≥11 % carbon dioxide
by molar volume, wherein the gaseous mixture comprises
nitrogen, oxygen, and carbon dioxide.4

Independent claim 36 is directed to a system for reducing survival of
ANS in a ship's ballast water (Claims App.).
The record supports the following findings of fact (FF):
1. The specification of the ’859 patent:
A. In discussing the known methods of addressing ANS, states:
Known methods not mentioned in this [Glosten-Herbert-
Hyde Marine (April 2002)] reference are hypoxia,
carbonation, and their combination. In studies of 18 months
duration on a coal/ore vessel (Tamburri et al. 2002), the
ballast water dissolved O2 level was reduced and held to
concentrations at or below 0.8 mg/l by bubbling essentially
pure nitrogen. See Tamburri, M. N., Wasson[,] K., and
Matsuda, M. (2002). Ballast water deoxygenation can
prevent aquatic introductions while reducing ship corrosion.
Biological Conservation. 103, 331-341. The experiments
resulted in a treatment "that can dramatically reduce the

4 Material shown in brackets is taken from cancelled parent claim 1. The
phrase, "while lowering oxygen in the same ship's ballast water to a level
effective to kill aquatic nuisance species by hypoxia," was added to claim 1
by amendment during the reissue proceeding and is shown in italics in the
’859 patent. Struck out material appears in the preamble of claim 2. The
phrase "wherein the gaseous mixture comprises nitrogen, oxygen, and
carbon dioxide," shown underlined above, was added by amendment in this
reexamination proceeding.

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survivorship of most organisms found in the ballast water
. . ."
In extensive experiments with gas of varying percent
CO2, N2 and O2 (McMahon, et al. 1995), the ". . . results
indicate that CO2 injection may be an easily applied, cost-
effective, environmentally acceptable molluscicide for
mitigation and control [of] a raw water system macrofouling
by Asian clams and zebra mussels". See McMahon, R. F.,
Matthews, M. A., Shaffer, L. R. and Johnson, P. D. (1995).
Effects of elevated carbon dioxide concentrations on
survivorship in zebra mussels (Dreissena polymorpha) and
Asian clams (Corbicula fluminea).
(Col. 2, ll. 23–43, emphasis added).

B. In summarizing the known methods of addressing ANS,
states:
Except for ballast water exchange, essentially all
treatment concepts involve the chemical change of the water
to cause an environment lethal for ANS. The chemical
changes described in Tamburri et al. (2002) and McMahon
(1995) offer promising results, i.e., reduce the dissolved O2 in
the one case, and carbonate and reduce the pH in the other
case. See Tamburri, M. N., Wasson[,] K., and Matsuda, M.
(2002), op cit. See also McMahon, R. F., Matthews, M. A.,
Shaffer, L. R. and Johnson, P. D. (1995), op cit.

In both cases the process involves the exchange of gases,
the extraction of the dissolved O2 and the introduction of
CO2.
(Col. 2, l. 65–col. 3, l. 9, emphasis added).

C. In summarizing the disclosed invention, states that ANS
is killed by:
inducement of (1) hypercapnia (elevated concentration of
dissolved CO2), (2) hypoxia (depressed concentration of
dissolved O2), and (3) acidic pH level. The inert combustion
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gases may be obtained, for example, from (i) a ship's inert
gas generator (of the Holec, or equivalent types), and/or from
(ii) ship's own flue gases. These gases are highly noxious,
having CO2 significantly increased and O2 significantly
depleted, from normal atmospheric levels.
(Col. 5, ll. 1–14).

D. States that the disclosed invention preferably uses the
gaseous output of a standard shipboard inert gas generator
preferably to enhance to >11% by volume and, preferably, to
>15% by volume, the CO2 content of the gas used to
carbonate the ballast water. The gaseous output of a
standard shipboard inert gas generator "is commonly about
84% Nitrogen, 12–14% CO2 and 2% Oxygen, and/or as a
ship's own flue gases."
(Col. 5, ll. 35–48, emphasis added).

THE REJECTIONS
The Patent Owner appeals from the following rejections of various
claims under 35 U.S.C. § 103(a) as being obvious over the noted
combination of prior art (App. Br. 5)5:
1. Claims 13, 15, 24, and 26 over Ryan,6 McMahon,7 and
Milwee.8

5 The Patent Owner summarizes the various Grounds of Rejection set forth
in the RAN in its Appeal Brief, enumerating 16 issues in the appeal (App.
Br. 5). The Requester accepts the Patent Owner's enumerated issues (Resp.
Br. 1) and groups its rebuttal arguments accordingly (see generally, Resp.
Br.). Thus, we address the present appeal based on the 16 issues enumerated
by the Patent Owner and accepted by the Requester, referring to them as
Rejections.
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2. Claims 2, 47 and 49–51 over Watten9 and Milwee.
3. Claims 13, 15, 24 and 26 over Browning,10 McMahon, and
Milwee.
4. Claims 13, 15, 24 and 26 over Greenman,11 McMahon, and
Milwee.
5. Claims 2, 3, 9, 19, 20, 47 and 49–51 over Watten, Elzinga,12
and Milwee.
6. Claims 2, 4, 5, 10, 13, 15, 16, 19, 21, 22, 24, 26, 27, 47 and 49–
51 over Watten, McMahon, and Milwee.
7. Claims 13–15 and 24–26 over Tamburri,13 McMahon, and
Milwee.

6 The Ballast Water Control Act: Hearings on H.R. 3360 Before the House
Comm. on Merchant Marine And Fisheries, 103rd Cong., 73–79 (1993)
(Testimony of George J. Ryan).
7 Robert F. McMahon et al, Effects of Elevated Carbon Dioxide
Concentrations on Survivorship in Zebra Mussels (Dreissena polymorpha)
and Asian Clams (Corbicula fluminea), PROCEEDINGS OF THE FIFTH INT’L
ZEBRA MUSSEL & OTHER AQUATIC NUISANCE ORGANISMS CONF. 319–36
(Feb. 1995).
8 William I. Milwee, Jr., MODERN MARINE SALVAGE 465–69 (Cornell
Maritime Press 1996)
9 US Patent No. 6,821,442 B1, issued Nov. 23, 2004, to Barnaby Jude
Watten.
10 US Patent No. 5,932,112, issued Aug. 3, 1999, to Wilson J. Browning, Jr.
11 Debra Greenman et al., Port-Based Ballast-Water Treatment Systems:
A Feasibility Study in the Port of Baltimore, 2(4) ANS DIGEST 38, 39 & 47
(Aug. 1998).
12 William J. Elzinga & Todd S. Butzlaff, Carbon Dioxide As A
Narcotizing Pre-Treatment For Chemical Control Of Dreissena
Polymorpha, PROCEEDINGS OF THE FOURTH INT’L ZEBRA MUSSEL
CONFERENCE 45-59 (Mar. 1994).
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8. Claims 13–17, 24–26, 36, 38, 41, 44–47 and 49 over Hunter,14
Elzinga, and Milwee.
9. Claims 13–17, 24–28, 36, 38, 41, 44–47 and 49 over Hunter,
McMahon, and Milwee.
10. Claims 42 and 43 over Hunter,15 Milwee, Elzinga, and
Furushima.16
11. Claims 42 and 43 over Hunter, McMahon, Milwee, and
Furushima.
12. Claim 6 over Watten, McMahon, Milwee, and Hunter.
13. Claims 37, 39 and 40 over Hunter, McMahon, Milwee, and
Watten.
14. Claims 17 and 23 over Watten, Milwee, McMahon, and Hunter.
15. Claims 29–31 and 33 over Greenman, Milwee, Tamburri, and
Elzinga.
16. Claims 34 and 35 over Greenman, Milwee, Tamburri, Elzinga,
and Hunter.

13 Mario N. Tamburri et al., Ballast Water Deoxygenation Can Prevent
Aquatic Introductions While Reducing Ship Corrosion, 103 Biological
Conservation 331-341 (2002).
14 US Patent Application No. 2002/0174814 A1, published Nov. 28, 2002,
Henry Hunter.
15 The Patent Owner omits Hunter from the list of references cited in this
ground of rejection (see RAN 82–83). This appears to be a typographical
error.
16 Japanese Patent No. JP S60-222389 (A), published Nov. 6, 1985, to
Furushima Nobuhiko.
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PRINCIPLES OF LAW
Arguments based on limitations not in the claims are unpersuasive. In
re Self, 671 F.2d 1344, 1348 (CCPA 1982). In addition, non-obviousness
cannot be established by attacking references individually where the
rejection is based upon the teachings of a combination of references. In re
Merck, 800 F.2d 1091, 1097 (Fed. Cir. 1986); In re Keller, 642 F.2d 413,
425 (CCPA 1981). A reference "must be considered for everything it
teaches by way of technology and is not limited to the particular invention it
is describing and attempting to protect." EWP Corp. v. Reliance Universal
Inc., 755 F.2d 898, 907 (Fed. Cir. 1985). "The combination of familiar
elements according to known methods is likely to be obvious when it does
no more than yield predictable results." KSR Int'l Co. v. Teleflex Inc., 550
U.S. 398, 415–16 (2007). Explicit teaching is not required. Id. at 418–19
Moreover, "[c]ommon sense teaches . . . that familiar items may have
obvious uses beyond their primary purposes, and in many cases a person of
ordinary skill will be able to fit the teachings of multiple patents together
like pieces of a puzzle." Id. at 420. In this regard, "[a] person of ordinary
skill is also a person of ordinary creativity, not an automaton." Id. at 421.

PRIOR ART FINDINGS OF FACT
The record supports the following additional findings of fact (FF) by a
preponderance of the evidence.
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2. Watten:
A. Discloses a method and apparatus for controlling aquatic
invasive species in a ship's ballast water (Watten, Title; Abst.; col.
5, ll. 15–26; claims 2 and 10).
B. States that oxygen deprivation, or hypoxia, is a known method
for "shipboard treatment of ballast water" to kill zebra mussels,
which are ANS (Watten, col. 3, ll. 20–22, 56–61).
C. States that the disclosed invention "causes death of target
species through continuous or intermittent exposure to
supersaturated concentrations of carbon dioxide, air, combustion
exhaust gas or a mixture of these gases when ΔP>0."
(Watten, col. 8, ll. 5–8; accord col. 4, ll. 62–66).
D. States "[i]t is understood that gas-liquid interfacial area can be
created by a number of reactor-types, stages, and that the gas-liquid
contacting can take place at pressures above, at or below local
atmospheric pressure." (Watten, col. 10, ll. 25–28).
E. States that when stack gas is transferred into water, acid may
form and "a corresponding reduction in pH may then provide a third
(concurrent) method of inducing mortality of zebra mussels or other
exotic species through gas transfer, e.g., the pH threshold for
survival of zebra mussel adults is 6.5 and for larvae 6.9." (Watten,
col. 7, l. 61–col. 8, l. 4).

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3. Elzinga:
A. Describes the use of CO2 to control zebra mussels, including at
levels lethal to the zebra mussel (Elzinga, Abst., Intro., pgs. 47, 50),
and, thus, discloses hypercapnia.
B. Discloses that dissolved O2 and pH values were also reduced
with increasing CO2 levels, pH levels being depressed below 6.0,
and as low as 5.2–5.3 (Elzinga, pg. 50).
C. Teaches that low pH levels are probably attributable to
formation of carbonic acid and that low pH interferes with ion
exchange and calcium metabolism (Elzinga, pg. 50).

4. Milwee states:
Inert gas systems fill the ullage space in cargo tanks with
gases containing little or no oxygen, so the mixture in the
tank remains outside the explosive range. . . . Exhaust gases
from the ship's boiler or a separate inert gas generator
provide the inert gas through a scrubbing system (figure 13-
4). Scrubbers and driers remove oxygen and water vapor
until the gas theoretically contains only nitrogen (85 percent)
and carbon dioxide (15 percent).
(Milwee, pg. 467, emphasis added).

5. McMahon:
A. Describes a study monitoring the effects of elevated CO2
concentrations on survivorship of zebra mussels and Asian clams,
which are considered ANS (McMahon, pg. 319, Title, Abst.).
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B. Describes continuously bubbling various gas mixtures under
anoxia and hypercapnic normoxia conditions (McMahon, pg. 319,
Abst.).
C. States:
These results indicate that CO2 injection may be an easily
applied, cost-effective, environmentally acceptable
molluscicide for mitigation and control of raw water system
macrofouling by Asian clams and zebra mussels. In fossil
fuel burning facilities, waste CO2 released from fuel
combustion could be utilized to prevent mussel or clam
fouling.
(McMahon, pg. 320).
D. States:
Due to its ability to form a weak acid when dissolved in
water (see Introduction), media bubbled with gases
containing elevated concentrations of CO2 had a reduced pH.
Over the course of the experiments the pH of media bubbled
with 100% CO2 ranged between 5.3 and 6.5. The pH of
media bubbled with gas mixtures with 5% CO2 ranged from
6.0 to 8.7 and with 10% CO2, from 6.2 to 7.5.

When exposed to anoxia in media bubbled with 100% CO2 at
25°C (Pco2 = 760 torr) zebra mussels and Asian clam
samples displayed considerably greater mortality rates than
when exposed to anoxia induced by bubbling media with
100% N2 (Figure 1).
(McMahon, pg. 324).

E. Discloses providing CO2 into water as molluscicide using a
microbubbling sparger system (McMahon, pg. 327).
F. Teaches that "[i]f waste CO2 from combustion processes was
captured and injected into raw water systems as a molluscicide,
efficient control of bivalve macrofouling could be affected [sic,
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effected] without the cost associated with purchase from a
supplier." (McMahon, pg. 329).

6. Hunter:
A. Discloses controlling pressure and content of ballast tank gases
to kill organisms within ballast water wherein the ullage space
gases are depressurized to a pressure less than atmosphere, and also
inerted so that there is <4% O2 or preferably <2% O2, so that the O2
content of the ballast water is lowered to <1% PPM, and more
preferably, <0.6% PPM (Hunter, Title; Abstract; Fig. 1).
B. States:
It does not matter for purposes of the present invention
whether the (ii) inerted, oxygen-depleted, condition of the
ullage space gases is realized by (1) extraction of oxygen, or
by (2) addition of gases, primarily nitrogen, other than
oxygen. Preferably flue gases, which are substantially
devoid of oxygen and which are primarily nitrogen, are
simply added to the ballast tank ullage space to cost
effectively dilute the oxygen content of the ballast tank ullage
space gases.
(Hunter ¶ [0064]).

C. States:
In accordance with the present invention gaseous interchange
between (i) gases––including oxygen––originally within the
ballast water and (ii) inerted gases within the ullage space of
the ballast water tank is very greatly accelerated. This
interchange is so accelerated by maintaining (1) an
underpressure in the ullage spaces.
(Hunter ¶ [0072]; see also Fig. 1).

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D. Discloses that ullage space gases are "depressurized to a
pressure that is preferably less than a -2 p.s.i. threshold
pressure level below nominal atmospheric pressure of 14.7
p.s.i. or to a pressure less than 12.7 p.s.i." (Hunter ¶ [0091]).

E. States:
Moreover, in accordance with the present invention there
preferably also simultaneously transpires (2) bubbling inert
gas(es) (primarily nitrogen) upwards through the ballast
water. This bubbling is necessarily at a pressure greater than
the (under)pressure of the ullage space plus the head of
ballast water, but is still most preferably done at a pressure
that is less than atmosphere.
(Hunter ¶ [0073]; see also Fig. 1).

F. States:
The net result is that the ballast water becomes severely
depleted of oxygen quite quickly, and on the order of hours;
greatly stressing if not immediately (within the order of
further minutes and hours) killing aerobic aquatic marine life
(of all kinds) within the ballast water. Normally, and
preferably, this oxygen-depleted condition of the ballast
water is maintained for the substantial duration of the voyage
of the ship.
(Hunter ¶ [0076]).

G. Discloses a "combustion gas generator" as a source for
inert gas, which is "bubbled through ballast water" until
solubility of the oxygen within the ballast is <1 PPM.
(Hunter ¶¶ [0145]–[0147]).

7. Tamburri discloses a treatment that reduces the survivorship of
most organisms, including ANS, found in ballast waters by purging
oxygen from the ballast tanks to hypoxic levels by treating the ballast
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water with nitrogen (Tamburri, Abst.; pg. 332, second column; pg.
335, second column).

8. Greenman discloses that a method for killing the organisms in the
ballast water is to treat the water with "a ship's diesel exhaust."
(Greenman, pg. 39).

ANALYSIS
We address the various arguments of the Patent Owner infra in an
order that slightly differs from the order presented in the Patent Owner's
briefs. Only those arguments actually made by the Patent Owner have been
considered, and any arguments not made are deemed to be waived. See
37 C.F.R. § 41.67(c)(1)(vii).

Rejection 5
Claims 2, 3, 9, 19, 20, 47, 49, 50 and 51 stand rejected as obvious
over the combination of Watten, Elzinga and Milwee. In rejecting the
claims, the Examiner incorporates by reference Ground 40 of the Office
Action mailed April 11, 2011 (RAN 25), which states:
Watten discloses a method of killing aquatic nuisance species in
ship's ballast water (col. 1, lines 13–16; col. 5, lines 22–24)
comprising: infusing carbon dioxide into the ship's ballast water
(language of claims 1 and 2 of col. 15; col. 8, lines 5–11) at a
level effective to kill aquatic nuisance species by hypercapnia
(col. 8, lines 5–11); while lowering oxygen in the same ship's
ballast water to a level effective to kill aquatic nuisance species
by hypoxia (col. 8, lines 35–37). To the extent that Watten does
not disclose infusing carbon dioxide to a level to cause both
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hypercapnia and hypoxia, Elzinga discloses bubbling through
water a gas mixture of carbon dioxide (bottom of page 49 to
middle of page 50) which causes the water to be both
hypercapnic (from "500 mg/l" of abstract and, for example,
"290 mg/l" of top of page 50 of Elzinga) and hypoxic (Fig. 3
and "dissolved oxygen and pH values were successively
reduced with increasing CO2 treatment levels" of middle of
page 50) which results in killing of aquatic nuisance species
(from "using carbon dioxide (CO2) a non-toxic treatment
alternative for control of zebra mussel" of abstract). It would
have been obvious to one of ordinary skill in the art at the time
of the invention to modify the method of Watten by using the
gas mixture of Elzinga to kill aquatic nuisance species so as to
control growth of zebra mussels with a non-toxic treatment (see
Elzinga at abstract).
(Office Action mailed April 11, 2011, pg. 27).

The Examiner's position is also that:
To the extent Watten as modified by Elzinga does not disclose
the gaseous mixture of ≥ 11 % carbon dioxide by molar volume
and the gaseous mixture comprising nitrogen, oxygen, and
carbon dioxide, Milwee discloses adding into the ballast/tank
area a ship's boiler exhaust or gas generator's gas, after
scrubbing and drying, that would have nitrogen (from "85
percent" of page 467), elevated CO2 levels (from "15%" of page
467 which is considered ≥ 11 % carbon dioxide by molar
volume) and reduced O2 levels (from "remove oxygen" and
"theoretically contains only nitrogen (85 percent) and carbon
dioxide (15 percent)" of page 467). It would have been obvious
to one of ordinary skill in the art at the time of the invention to
further modify the method of Watten as modified by Elzinga by
using the ship's boiler exhaust or a gas generator's gas as
disclosed by Milwee so as to reduce the possibility of
combustion on board ship when carrying flammable liquids
(Milwee at pages 465–469) in addition to killing aquatic
nuisance species. Use of the exhaust gas of Milwee in the
method of Watten and Elzinga (with the gas mixture transferred
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to the ballast water (Watten at col. 8, lines 8–11, and claims 1
and 2)) would inherently over time, or when in equilibrium,
cause hypoxic and hypercapnic conditions in the ballast water
which would consequently kill aquatic nuisance species.
(RAN 25–26).

Claims 2, 3, 9, 19 and 20
The Patent Owner argues that "Elzinga does not disclose the use of a
gas mixture" and that the drop in dissolved oxygen disclosed in Elzinga
"would not be effective to kill aquatic nuisance species by hypoxia." (App.
Br. 23, citing Decl. of Felbeck ¶ 6). The Patent Owner also argues that
"Watten and Milwee do not teach or suggest rendering ballast water
hypoxic, and never state that a gaseous mixture of nitrogen, carbon dioxide,
and oxygen should be used to render ballast water hypercapnic and
hypoxic." (App. Br. 23). These arguments are unpersuasive mainly because
they argue the references individually. In re Merck, 800 F.2d at 1097; In re
Keller, 642 F.2d at 425.
While Elzinga may not disclose the use of a gas mixture, both Watten
and Milwee disclose use of gas mixtures. Watten teaches a method for
treating ballast water for ANS using CO2, air, combustion exhaust gas, or
mixtures thereof (FF 2A, 2C), and Elzinga also discloses use of CO2 at
levels lethal to ANS and reduction of O2 (FF 3A, 3B). Although Elzinga
also may not explicitly disclose hypoxia, Watten teaches that controlling
ANS by hypoxia was known (FF 2B), and the Patent Owner also admitted in
the Specification of the ’859 patent that hypoxia (as well as carbonation)
was a known technique for controlling ANS (FF 1A, 1B).
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As to the composition of the gas mixture, we observe that Watten
teaches a mixture of CO2, air and combustion exhaust gas, or mixtures
thereof (FF 2C) that would comprise nitrogen, carbon dioxide, and oxygen.
The Patent Owner also argues that the gas of Milwee does not include
oxygen because the disclosed gas mixture is 15% CO2 and 85% N2 (Rebuttal
Br. 2–3). However, this argument not only ignores the teaching of Watten
that a mixture of gases such as CO2, combustion exhaust gas, and air can be
used that would include O2 (FF 2C), but also ignores Milwee's teaching that
inert gas systems generate gases "containing little or no oxygen" and that the
gas theoretically contains only nitrogen and carbon dioxide (FF 4), which
indicates that some small amount of oxygen is likely present considering
theoretical purity is difficult to attain in reality. Indeed, Milwee teaches that
various hydrocarbons have different flammability requirements as to oxygen
percentage, but does not disclose that zero oxygen is required to prevent an
explosion, which is an objective of its disclosed invention (see Milwee, pg.
466).
The Patent Owner further argues that Milwee does not use inert gas in
treatment of ballast water and describes disadvantages of soot that is
produced by overuse of inert gas, which can contaminate the cargo held in
the cargo tanks (App. Br. 24). However, the Patent Owner ignores Watten's
teaching to use CO2 and/or combustion exhaust gas, which are inert gases, in
the ballast water as a treatment for ANS (FF 2A–2C). Moreover, the
existence of a disadvantage does not establish non-obviousness. See
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006) ("a
given course of action often has simultaneous advantages and disadvantages,
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and this does not necessarily obviate motivation to combine."). In the case
at hand, the inert gas is being provided to the ballast water to be released
back into the ocean instead of some product that is to be sold. The record
indicates that ANS carried within the ballast water is a significant problem,
but there is little indication that such gaseous treatment of ANS poses a
significant problem when the treated water is released back into the ocean.
The Patent Owner argues that the conclusion "that it would have been
obvious to use inert gas to treat ballast water cannot be reconciled with the
long-standing coexistence of inert gas systems on ships and the previously
unresolved problem with aquatic nuisance species in ballast water." (App.
Br. 24). However, as further discussed infra relative to secondary
considerations, we disagree that killing of ANS in ballast tanks is an
unsolved problem considering the explicit teachings of Watten to use inert
gas, such as combustion exhaust gas, for this very purpose (FF 2A–2C). In
addition, the prior art of record also indicates that a person of ordinary skill
knew that inert gas might be obtained from the ship's exhaust and/or the
onboard inert gas generator (FF 4), to any extent that these gases materially
differ. While beyond its primary purpose explicitly disclosed in Milwee of
providing inert gas to cargo tanks to prevent explosion, use of an inert gas
generator to provide inert gas to the ballast tank would have been obvious to
a person of ordinary skill in view of Watten (FF 2A–2C) and considering
such a person possesses ordinary creativity. KSR, 550 U.S. at 420–421.

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Claim 47
The Patent Owner refers to the same arguments proffered relative to
claims 2, 3, 9, 19 and 20 (App. Br. 24), which are unpersuasive for the
reasons already discussed. The Patent Owner also argues that "[n]one of
Watten, Elzinga, and Milwee teach infusing carbon dioxide into ship's
ballast water that is maintained under atmospheric pressure or less" and that
"Watten relies on high pressure to supersaturate the ballast water" so that it
does not teach killing ANS "at pressure less than atmospheric pressure."
(App. Br. 24).
This argument is unpersuasive because, inter alia, it is based on
limitations not in the claim. In re Self, 671 F.2d 1344, 1348 (CCPA 1982).
Claim 47 does not require that the ballast water be maintained "at pressure
less than atmospheric pressure" as argued, but instead, recites that the ballast
water be maintained "under atmospheric pressure or less." It cannot be
reasonably disputed that maintaining ballast water under atmospheric
pressure was a known practice.

Claim 49
The Patent Owner refers to the same arguments proffered relative to
claims 2, 3, 9, 19, 20 and 47 (App. Br. 24), which are unpersuasive for the
reasons already discussed. The Patent Owner also argues that the references
fail to teach killing aquatic nuisance species "by hypercapnia in combination
with reduced, acidic, pH." (App. Br. 25).
However, Watten discloses that in addition to hypercapnia, reduction
in pH is a "third (concurrent) method of inducing mortality" of ANS (FF 2E;
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RAN 32). In addition, Elzinga clearly discloses controlling ANS by
increasing CO2, which also lowers pH values, thus interfering with ion
exchange and calcium metabolism of ANS (FF 3A–3C; RAN 33).
Accordingly, we agree with the Examiner that over time, the combination of
the prior art would "cause hypercapnic, hypoxic, and reduced (acidic) pH
conditions in the ballast water which would consequently kill aquatic
nuisance species." (RAN 33). We also agree with the Requester that it
would have been obvious to one of ordinary skill in the art to "infuse a
gaseous mixture with an elevated CO2 concentration (e.g., exhaust gas from
a ship's engine) into ballast water until the CO2 concentration is high enough
to kill ANS by hypercapnia and/or the pH of the ballast water is itself low
enough to kill ANS." (Resp. Br. 5–6; see also Decl. of Rau ¶ 6). In the
above regard, we also note that the claims do not identify the particular
specie(s) of ANS to be killed via hypercapnia and reduced pH, different
species having differing tolerances to various environmental conditions.

Claim 50 and 51
The Patent Owner arguments as to these claims are substantively the
same as those already discussed supra. The Patent Owner also argues that
the Office has provided no motivation for including 2–4% mole percent
oxygen as required by the claims (App. Br. 25). The Examiner's position is
that such percentage of oxygen would have been obvious "depending on the
type of exhaust or gas generator used." (RAN 94). We agree with the
Examiner. We also observe that the specification of the ’859 patent states
that the gaseous output of a standard shipboard inert gas generator has 2%
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oxygen (FF 1D). We further observe that the Patent Owner's argument is
based on an inert gas content described as merely "theoretical" (FF 4). Thus,
this limitation would be satisfied upon using a standard shipboard inert gas
generator, such as that of Milwee, as a source for inert gas and would have
been obvious based on knowledge of the output of standard shipboard inert
gas generators.

Rejection 6
Claims 2, 4, 5, 10, 13, 15, 16, 19, 21, 22, 24, 26, 27, 47 and 49–51
stand rejected as obvious over the combination of Watten, McMahon, and
Milwee. The issues pertaining to this rejection are similar to those of
Rejection 5 already discussed except that McMahon is relied upon instead of
Elzinga. In rejecting these claims, the Examiner incorporates by reference
Ground 52 of the Office Action mailed April 11, 2011 (RAN 34).
Correspondingly, the position of the Examiner is that:
To the extent that Watten does not disclose infusing carbon
dioxide to a level to cause both hypercapnia and hypoxia,
McMahon discloses bubbling through water a gas mixture of
carbon dioxide (100%) which causes the water to be both
hypercapnic (from "solubility of CO2 at saturation at 25°C (as
in media bubbled with 100% CO2) is 1,430 mg 1-1 or 750 ml 1-
1" and Table 3 of bottom of page 327 of McMahon where 1430
mg/1 is 1430 ppm) and hypoxic (abstract, top of page 323, Fig.
1 for solid circles and triangles) which results in killing of
aquatic nuisance species (Fig. 1). It would have been obvious
to one of ordinary skill in the art at the time of the invention to
modify the method of Watten by using the gas mixture of
McMahon to kill aquatic nuisance species so as to control the
macrofouling spread of both zebra mussels and Asian clams
(see McMahon at middle of page 321).
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(Office Action mailed April 11, 2011, pg. 34).

Claims 2 and 4
The Patent Owner presents arguments substantively similar to those
presented with respect to Rejection 5 (App. Br. 25–26), which have already
been addressed supra.
As to McMahon, the Patent Owner argues that:
While McMahon does teach mixtures of nitrogen, oxygen, and
carbon dioxide, those mixtures are "normoxic," and would not
lower oxygen to a level effective to kill aquatic nuisance
species by hypoxia. In contrast to McMahon's discussions of
anoxia or hypercapnic normoxia, McMahon never teaches or
suggests inducing hypoxia, and never suggests using a gaseous
mixture comprising nitrogen, carbon dioxide, and oxygen to do
so.
(App. Br. 26).

However, the Patent Owner again argues the references separately.
Gaseous mixtures of nitrogen, oxygen, and carbon dioxide are disclosed in
Watten and Milwee (FF 2A, 2C, 4) as well as McMahon. In addition, both
Watten and the admission of the Patent Owner establish that controlling
ANS through hypoxia was a known technique (FF 2A, 2B, 1A, 1B). We
also observe that McMahon also discloses gas mixtures under hypercapnic
anoxia condition as well as hypercapnic normoxia condition (FF 5B).
Correspondingly, it would have been obvious to a person of ordinary skill in
the art to consider and use a gas mixture that is between anoxia and
normoxia conditions to control ANS through hypoxia, which was a known
technique (FF 2A, 2B, 1A, 1B). KSR, 550 U.S. at 420–421.

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Claim 5
The Patent Owner refers to the same arguments proffered relative to
claims 2 and 4 (App. Br. 26), which are unpersuasive for reasons already
discussed. The Patent Owner also argues that although claim 5 requires
bubbling of the gaseous mixture "through ballast water that is under less
than atmospheric pressure," Watten discloses "pressures greater than
atmospheric to supersaturate the water," so that the use of claimed method
would be contrary to principle of operation disclosed in Watten (App. Br.
26).
The position of the Examiner is that this limitation is satisfied by
Watten's disclosure that "the gas-liquid contacting can take place at
pressures above, at or below local atmospheric pressure" (RAN 36; FF 2D).
Indeed, while Watten does disclose treatment of ballast water at pressures
greater than atmospheric pressure, as discussed in further detail infra with
respect to claim 16, Watten nonetheless also discloses that the treatment
wherein the gas-liquid contact occurs at below atmospheric pressure (FF 2D)
to thereby satisfy the limitation at issue.

Claim 10
The Patent Owner refers to the unpersuasive arguments proffered
relative to claims 2 and 4 (App. Br. 27). The Patent Owner also argues that
the combination of Watten, McMahon, and Milwee fails to suggest CO2
concentration in the ballast water of ≥ 20ppm (App. Br. 27). However,
claim 10 does not recite CO2 concentration of ≥ 20ppm, but instead recites
that "the infusing transpires by bubbling the gaseous mixture through the
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ballast water." (Claims App.). As the Examiner finds (RAN 37), McMahon
discloses bubbling of the gases and a microbubbling sparger system (FF 5B,
5D, 5E).

Claims 13 and 15
The Patent Owner again refers to the unpersuasive arguments
proffered relative to claims 2 and 4 (App. Br. 27). The Patent Owner also
argues that the combination of Watten, McMahon, and Milwee fails to
suggest mixture of nitrogen, oxygen and CO2, wherein O2 is ≤ 4%, the only
mixture in McMahon having all three gases is normoxic, and the gas of
Milwee does not have oxygen (App. Br. 27). However, these arguments
have already been addressed supra and found unpersuasive.

Claim 16
The Patent Owner refers to the unpersuasive arguments proffered
relative to claims 5, 13 and 15 (App. Br. 27). The Patent Owner also argues
that while claim 16 requires bubbling through the ballast water that is under
less than atmospheric pressure (App. Br. 27), in Watten, the killing of ANS
occurs at pressures above atmospheric pressure (App. Br. 28, citing Watten,
Abstract). Again, the position of the Examiner is that this limitation is
satisfied by Watten's disclosure that "the gas-liquid contacting can take place
at pressures above, at or below local atmospheric pressure" (RAN 39; FF
2D).
According to the Patent Owner, the "gas-liquid contacting" referenced
in Watten "takes place before 'the raw water is exposed at positive gage
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pressures to gas enriched with CO2 thereby allowing for high required
dissolved gas tensions,'" and "[a]ny optional pretreatment below atmospheric
pressure cannot change the fact that killing of aquatic species in Watten
occurs later and only above atmospheric pressure." (App. Br. 28, citing
Watten, Abstract).
We disagree. The pertinent portion of Watten states as follows:
The CO2 pretreatment absorber 28 accelerates gas absorption by
exposing the water to a gas with a partial pressure of CO2 that
exceeds dissolved carbon dioxide tensions in the incoming raw
water and by establishing gas-liquid interfacial area needed for
gas transfer. For example, exposing water to 50% CO2 gas
mixture (XCO2 =0.5, Equation 2) can increase the carbon
dioxide saturation concentration (C*, Equation 2) by a factor of
2860.
It is understood that gas-liquid interfacial area can be
created by a number of reactor-types, stages, and that the gas-
liquid contacting can take place at pressures above, at or below
local atmospheric pressure. Following the pretreatment
absorber 28, raw water is forced by a pump 12 through the gas
absorber 18. In the gas absorber 18, the raw water is exposed at
positive gage pressures to gas enriched with CO2 thereby
allowing for high required dissolved gas tensions.
(Watten, col. 10, ll. 16–33).

Thus, the term "gas-liquid interfacial area" is referenced in the context
of accelerating CO2 absorption and increasing the carbon dioxide saturation
concentration. Watten then teaches that the gas-liquid interfacial area can be
created so that the gas-liquid contact occurs "at pressures above, at or below
local atmospheric pressure." Id. Thus, while Watten does disclose treatment
at pressures greater than atmospheric pressure, it also suggests that CO2 can
be added to water that is under less than atmospheric pressure. Moreover,
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while the Patent Owner argues that this provision of CO2 via closed conduit
30 is in the context of a pretreatment, we fail to see a distinction because the
steps disclosed in Watten are all part of the disclosed method for treating
ballast water to control ANS, and the claims do not prohibit multiple steps.
We also do not share the view that "killing of aquatic species in Watten
occurs later and only above atmospheric pressure" as asserted (App. Br. 28).
If the water is treated so that ANS cannot survive, it is immaterial that the
specific treatment is characterized as being part of an earlier stage of
treatment versus a later stage of treatment. Watten discloses treating the
water with CO2 to increase its saturation concentration by a very large factor
and teaches that this can occur at pressures below atmospheric pressure.

Claims 19, 21 and 22
The Patent Owner refers to, or submits, unpersuasive arguments that
are substantively the same as those already addressed (App. Br. 28–29). In
response to the Examiner's finding that "adding carbon dioxide to a ship's
ballast water will concomitantly lower pH." (RAN 40, citing Dec. of Rau
¶ 4), the Patent Owner also argues that it is not necessarily true that adding
carbon dioxide to a ship's ballast water will lower pH because "presence of
calcium compounds or other buffering agents in the ballast water may
counteract the effect of an increase in carbonic acid." (App. Br. 28). We
find this argument is also unpersuasive because both Watten (FF 2E) and
McMahon (FF 5D) disclose reduction in pH. The argument is also
unpersuasive because it is speculative as to the presence of calcium
compounds or other unspecified buffering agents, and their potential effects.
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The Patent Owner further argues that McMahon discloses that pH
may not be reduced below neutrality, and that this may minimize corrosion
rates (App. Br. 29) which is a desirable outcome. However, this argument
based on McMahon individually is unpersuasive. Watten clearly discloses
the addition of carbon dioxide to control ANS in a ship's ballast water even
while recognizing the resultant pH reduction (FF 2A, 2C–2E). A person of
ordinary skill in the art would know that CO2 levels sufficient to result in
killing ANS by hypercapnia will concomitantly lower pH as found by the
Examiner (RAN 40; FF 5D; see also FF 2E). Finally, to any extent that the
reduction in pH may increase corrosion rates, mere existence of a potential
disadvantage does not establish non-obviousness. See Medichem, 437 F.3d
at 1165.17

Claims 24, 26 and 27
The Patent Owner refers to the unpersuasive arguments proffered
relative to claims 2, 4, 19, 21 and 22 (App. Br. 29). The Patent Owner also
argues that these claims require substitution of gases and that the gas
mixture contains ≤ 4% O2, but Watten teaches killing via supersaturated
concentration of CO2 or gas bubble disease (App. Br. 29) and that the
combination to substitute gases changes Watten's principle of operation
(App. Br. 29–30).
However, while the Patent Owner argues Watten separately, as found
by the Examiner (RAN 43), McMahon discloses substitution of gases by

17 Indeed, Tamburri, which is of record but not relied upon for this rejection,
also establishes that deoxygenation can reduce ship corrosion (see Tamburri,
Title; see also FF 1A).
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preponderance of the evidence, considering that it does not increase pressure
to supersaturate the ballast water. Indeed, substitution of gases has been
admitted to be known and disclosed in McMahon in the specification of the
’859 patent, which states that prior art processes including that of McMahon
involve "the exchange of gases, the extraction of the dissolved O2 and the
introduction of CO2." (FF 1B). As to the percentage of oxygen, we agree
with the Examiner (RAN 43) that this limitation is disclosed by Milwee for
the reasons already discussed supra. Furthermore, the underlying principle
of operation of Watten and McMahon is to kill ANS by changing the
balance of the dissolved gas in the water so that ANS cannot survive in the
changed environment. Moreover, as discussed supra, Watten specifically
teaches provision of gas "at pressures above, at or below local atmospheric
pressure." (FF 2D). Thus, we do not agree that the principle of operation by
the combination suggested.

Claims 47 and 49–51
The Patent Owner refers to the unpersuasive arguments proffered
relative to claims 2 and 4 and submits other arguments substantively the
same as those already found unpersuasive supra (App. Br. 30–32).

Rejection 9
Claims 13–17, 24–28, 36, 38, 41, 44–47 and 49 stand rejected as
obvious over the combination of Hunter, McMahon and Milwee. In
rejecting the claims, the Examiner incorporates by reference Grounds 103
and 107 of the Office Action mailed April 11, 2011 (RAN 68), which states:
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Hunter discloses a method of killing aquatic nuisance species in
ship's ballast water (abstract) comprising: infusing gas into the
ship's ballast water (from "primary nitrogen" from paragraph
[0073]) while lowering oxygen in the same ship's ballast water
to a level effective to kill aquatic nuisance species by hypoxia
(abstract).
(Office Action mailed April 11, 2011, pg. 61).
In addition, "[t]o the extent that Hunter does not disclose infusing
carbon dioxide to a level to cause both hypercapnia and hypoxia," the
Examiner sets forth findings with respect to McMahon noted supra relative
to Rejection 6 (id.). The Examiner further sets forth the same findings with
respect to Milwee, noted supra relative to Rejection 5, "[t]o the extent
Hunter as modified by McMahon does not disclose the carbon dioxide
gaseous mixture also containing nitrogen and ≤4% oxygen." (RAN 69).

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Claims 13-17
These claims require infusion of a gaseous mixture containing carbon
dioxide, nitrogen, and oxygen, in which oxygen is <4%. The Patent Owner
argues that "Hunter does not teach a gaseous mixture comprising carbon
dioxide, nitrogen, and oxygen" and that while McMahon does teach
"hypercapnic normoxic" gaseous mixture, neither Hunter nor McMahon
teaches using a gaseous mixture of nitrogen, oxygen, and carbon dioxide to
kill ANS both by hypercapnia and by hypoxia (App. Br. 39). The Patent
Owner also argues that substituting McMahon's hypercapnic normoxic
mixtures "would defeat the principle of operation of Hunter, since Hunter
operates by depleting oxygen in ballast waste to kill aquatic nuisance
species." (App. Br. 39).
The Patent Owner's arguments are unpersuasive. Hunter discloses
killing of ANS within ballast water by the addition of inert gas mixture so
that there is <4% O2 (FF 6A, 6F). Hunter also discloses that flue gases that
are "substantially devoid of oxygen and which are primarily nitrogen" may
be used (FF 6A, 6B), the qualifiers "substantially" indicating that some
oxygen is present in the flue gases by preponderance of the evidence.
Hunter also teaches that a "combustion gas generator" may be used as a
source for the inert gas (FF 6G). In addition, as already discussed, Milwee
disclose a gas mixture having oxygen <4%. The evidence of record also
indicates that inert gas generated by such onboard gas generator includes
about 84% nitrogen, 12–14% CO2, and 2% oxygen (FF 1D).
While Hunter does not appear to explicitly disclose killing ANS by
hypercapnia, McMahon clearly does (FF 5A, 5C, 5E). The method of these
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claims merely recites an obvious combination of the two known methods of
killing ANS, namely, by hypoxia (FF 6A, 6F) and hypercapnia (FF 5A, 5C,
5E), to yield a predictable result. KSR, 550 U.S. at 415–16. The remaining
arguments as to these claims are substantively the same as those addressed
and found unpersuasive supra.

Claims 24–28
The Patent Owner relies on the unpersuasive arguments submitted
with respect to claims 13–17, as well as arguments already considered supra
and found unpersuasive (App. Br. 40).

Claims 36, 41, 44 and 47
As to these claims, the Patent Owner argues that combining Hunter
and McMahon does not result in the recited mixture of carbon dioxide,
nitrogen and oxygen (App. Br. 41). We are not persuaded. In addition to
the discussion supra with respect to Hunter that teaches use of an onboard
combustion gas generator as the source of the inert gas (FF 6G) and
McMahon that suggests waste CO2 from combustion processes as the inert
gas (FF 5D, 5F), the Patent Owner ignores Milwee's teachings as to inert gas
systems (FF 4) and its own admission that standard shipboard inert gas
generators output a mixture of carbon dioxide, nitrogen, and oxygen (FF
1D). The remaining arguments as to these claims are substantively the same
as those already addressed and found unpersuasive.

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Claim 38
The Patent Owner refers to the unpersuasive arguments submitted
with respect to claims 36, 41, 44 and 47, and further argues that the
references "fail to suggest that an inert gas generator could be used to
generate the pure carbon dioxide of McMahon." (App. Br. 42). However,
this is not the proper inquiry and the Patent Owner does not take into
account what the collective teachings of the prior art would have suggested
to one of ordinary skill in the art. See In re Keller, 642 F.2d at 425; EWP,
755 F.2d at 907. The Patent Owner ignores the combined teachings of
Hunter and Milwee as already discussed supra and McMahon's teaching of
killing ANS by elevating levels of CO2, which may be obtained from fuel
combustion processes (FF 5A, 5C, 5F). The proper inquiry is whether "flue
gases" and "combustion gas generator" disclosed in Hunter (FF 6B, 6G) and
inert gas disclosed in Milwee (FF 4) satisfy the claim recitations pertaining
to the gas composition.

Claim 45
The Patent Owner refers to the unpersuasive arguments with respect
to claim 38 (App. 42). While not disputing the Examiner's finding that the
prior art combination discloses the recited amount and constituents of gases
recited in claim 45 (RAN 78), the Patent Owner argues that the prior art fails
to establish that an inert gas generator could generate a gas to render the
ballast water hypoxic, hypercapnic, and acidic to the levels recited (App. Br.
42–43). However, we observe that claim 45 specifically recites that the gas
is "produced by the inert gas generator." (Claims App.). It is not apparent
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where in the specification the ’859 patent discloses an inert gas generator
that differs from the disclosed "standard shipboard inert gas generator" (FF
1D) or discloses further processing of the generated gas mixture. Thus, by
preponderance of the evidence, it follows that the gas from the disclosed
standard inert gas generator is sufficient to render the ballast water hypoxic,
hypercapnic, and acidic to the levels recited. Correspondingly, it likewise
follows by preponderance of the evidence that the recited levels are satisfied
by the disclosure of the combustion gas generator in Hunter (FF 6G) and/or
inert gas system in Milwee (FF 4).
Furthermore, we also observe that attaining the recited ballast water
conditions also depends on the amount of water treated, as well as the
duration of the treatment, both of which are not recited in the claim, or
otherwise limited by the specification of the ’859 patent. Correspondingly,
the claim limitations at issue are satisfied by the disclosures in the prior art
in view of the admissions in the specification of the ’859 patent and/or is an
obvious optimization of result effective variables based on the particular
inert gas generator, amount of ballast water involved, and the duration of the
treatment. See In re Boesch, 617 F.2d 272, 276 (CCPA 1980) (discovery of
an optimum value of a result effective variable is ordinarily within the skill
of the art); In re Aller, 220 F.2d 454, 456 (CCPA 1955).

Claim 46
The Patent Owner argues that while claim 46 requires the inert gas to
be delivered at a rate sufficient to establish equilibrium in the ballast water
within a period less than one-half the normal voyage duration minus the time
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for ANS to die to 90% level, the prior art does not "establish that a gas
produced by the inert gas generator could ever achieve the required effects,
regardless of the rate of delivery." (App. Br. 43). However, analysis similar
to that of claim 45 discussed above applies here as well, and we agree with
the Examiner (RAN 79) that it would have been obvious to have the rate of
gas delivery so as to attain equilibrium within the time frame and lethality
recited. In this respect, we further observe that both McMahon and Hunter
disclose bubbling of the gas (FF 5B, 5D, 5E, 6E, 6G), and Hunter further
discloses depressurizing the ullage space gasses to a pressure less than
atmosphere (FF 6A, 6C–6D). Both of these techniques are described in the
specification of the ’859 patent as enhancing deoxygenation as the gases are
exchanged in the water (see, e.g., the ’859 patent, col. 7, ll. 20–27; col. 15,
ll. 65–66). Hunter explicitly describes that when its system is used, in which
the gas is bubbled and ullage space is depressurized, "the ballast water
becomes severely depleted of oxygen quite quickly, and on the order of
hours; greatly stressing if not immediately (within the order of further
minutes and hours) killing aerobic aquatic marine life (of all kinds) within
the ballast water." (FF 6F). Correspondingly, we do not agree that claim 46
presents nonobvious subject matter.

Claim 49
The Patent Owner's arguments with respect to claim 49 (App. Br. 43–
44) are substantively the same as those already discussed and, thus, are
unpersuasive.

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Rejections 11–14
Regarding Rejections 11–14, the Patent Owner refers to previous
arguments with respect to Rejections 9 and 6 in support of patentability of
the rejected claims (App. Br. 44–47). These arguments are unpersuasive for
the reasons discussed supra.

Rejection 15
Claims 29–31 and 33 stand rejected as obvious over the combination
of Greenman, Milwee, Tamburri and Elzinga. As to claim 29, the Examiner
finds:
Greenman discloses a method of reducing survival of aquatic
nuisance species in ship's ballast water (from "ideal treatment
system would remove or kill all organisms either before the
ballast water enters the ballast tank or before the vessel enter
the port of designation" of middle of col. 1, page 39)
comprising permeating the equilibrium a gaseous mixture
consisting essentially of ≥84% nitrogen, ≥11 % carbon dioxide
and ≤ 4% oxygen through ship's ballast water (from "treating
water with . . . a ship's diesel exhaust to kill organisms" of
middle of col. 1, page 39, in that this is comparable to "ship's
own flue gases" of Husain at col. 5, lines 42-48).
(RAN 90).
The Examiner also alternatively relies on Milwee in the manner set
forth supra with respect to other grounds of rejection and further states:
To the extent that Greenman and Milwee do not disclose these
concentrations, Tamburri discloses the ballast water being
hypoxic to ≤ 1 ppm oxygen (from "≤0.2 mg/l" of page 334 of
Tamburri); Elzinga discloses water being hypercapnic to ≥ 20
ppm carbon dioxide (from "toxic effects at concentrations of
500 mg/l" of abstract of Elzinga with 500 mg/l equal to 500
ppm), and acidic to pH ≤ 7 (from Fig. 3 of Elzinga).
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It would have been obvious to one of ordinary skill in the
art at the time of the invention to modify the method of
Greenman by using the ship's boiler exhaust or a gas generator's
gas as disclosed by Milwee so as to reduce the possibility of
combustion on board ship when carrying flammable liquids
(Milwee at pages 465-469) in addition to killing aquatic
nuisance species. Use of the exhaust or gas generator's gas of
Milwee in the method of Greenman would inherently over time,
or when in equilibrium, cause hypercapnic, hypoxic, and acidic
conditions in the ballast water which would consequently kill
aquatic nuisance species. Further, permeating the ballast of
Greenman with the gaseous mixture of Greenman, Milwee,
Tamburri and Elzinga would kill aquatic nuisance species so as
to control growth of zebra mussels with a non-toxic treatment
(see Elzinga at abstract).
(RAN 90–91).

Claim 29
As to claim 29, the Patent Owner argues that Greenman does not
disclose any details of the manner in which a ship's diesel exhaust is used to
treat water so as to kill ANS, such as pressure conditions, pre-treatment
requirements, etc. (App. Br. 47). However, the Patent Owner does not
establish that such specific details are required to practice the technique
disclosed in Greenman or that lack of such details renders the disclosure
therein false or inoperative to kill ANS. For example, the Patent Owner
does not assert, much less establish, that killing of ANS via ship's diesel
exhaust requires the specific pressure conditions, pre-treatment, etc.
Greenman teaches what it teaches, that is, treating ballast water with a ship's
diesel exhaust is a method for killing organisms in the ballast water (FF 8).
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The Patent Owner also argues that the references relied upon, and its
own specification in the ’859 patent, do not disclose the composition of the
ship's diesel gas recited in the claims (App. Br. 47–48). While that may be
true, the specification in the ’859 patent itself established functional
equivalence between the gaseous output of a standard shipboard inert gas
generator and a ship's flue gases (FF 1D). Thus, in view of the admitted
functional equivalence, a prima facie case of equivalence as to the
composition of those gases has been established. The Patent Owner does not
argue, much less establish through persuasive evidence, that a ship's flue
gases do not disclose the recited composition. Furthermore, the Patent
Owner's argument that Milwee's gas does not include oxygen, and other
arguments (App. Br. 48–49) have been previously discussed and found
unpersuasive.

Claim 30
The Patent Owner relies on unpersuasive arguments submitted relative
to claim 29 and presents arguments (App. Br. 50) that have been previously
discussed and found unpersuasive as well.

Claim 31
The Patent Owner relies on unpersuasive arguments submitted relative
to claim 30 and further argues that while claim 31 requires CO2
concentration within the range from 14% to 11% and O2 concentration in the
range of 2% to 4%, Milwee merely discloses CO2 concentration of 15% and
no reference discloses the range of O2 (App. Br. 50–51). However, similar
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considerations as those set forth supra relative to arguments regarding claim
45 in Rejection 9 is also applicable here. The Patent Owner ignores the
teachings of Greenman that a ship's diesel exhaust can be used to kill
organisms in the ballast water (FF 8), Milwee's teachings that ship's exhaust
gases have N2, CO2 and O2 for the reasons already discussed (FF 4), and its
own statements as to the functional equivalence between a ship's flue gases
and the gaseous output of a standard shipboard inert gas generator, which
outputs a mixture of CO2, N2 and O2 having the gas concentrations within
the recited ranges of claim 31 (FF 1D).

Claim 33
The Patent Owner relies on unpersuasive arguments submitted relative
to claim 29 and submits unpersuasive arguments (App. Br. 51) that have
already been substantively addressed.

Rejection 16
Claims 34 and 35 stand rejected as obvious over the combination of
Greenman, Milwee, Tamburri, Elzinga and Hunter. The Patent Owner again
relies on unpersuasive arguments submitted relative to claim 29 and already
substantively addressed (App. Br. 51–52).

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Secondary Considerations
Citing to the Declaration of Husain for support, the Patent Owner
asserts that although the problems associated with addressing ANS were
recognized in the art for a long time, this long-felt need was not satisfied
until the present invention (App. Br. 9–11). The declarant Mr. Husain is a
named co-inventor of the ’859 patent and is the "President, CEO, and sole
stockholder of MH Systems, Inc. (the assignee of the [’859] patent)" (Decl.
of Husain ¶ 1), and thus, Mr. Husain has a financial and controlling interest
in the ’859 patent. The Patent Owner cites to Ryan (1993), Nonindigenous
Aquatic Nuisance Prevention and Control Act of 1990, and National
Invasive Species Act (1996) to support the contention that prior to the
claimed invention, "the long-felt need for a solution to the problem of
aquatic nuisance species in ballast water" was not solved (App. Br. 10–11;
Decl. of Husain ¶ 10).
However, the prior art of record indicates that solutions similar to that
of the claimed invention had been developed to address the problem of ANS
in ballast water. In particular, prior art references Watten (FF 2A–2C),
Hunter (FF 6A–6G), Tamburri (FF 7) and Greenman (FF 8), all published
subsequent to the National Invasive Species Act (1996), describe various
solutions to the ANS problem in which an inert gas, such as combustion
exhaust gas (FF 2C, 6B, 8) or gas from a gas generator (FF 6G), is provided
to the ballast water. These prior art references teach solutions that, while not
identical, are similar to that of the claimed invention, and support the
conclusion that the problem of ANS had been solved prior to the invention
disclosed in the ’859 patent. The declarant does not address the prior art of
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record beyond those arguments set forth in its briefs, which have been
addressed supra.
The Patent Owner also asserts that the invention has been copied by
Requester Coldharbour (App. Br. 11), relying on Coldharbour's webpage
which states:
As the inert gas diffuses into the ballast water through the
GLD, Oxygen is stripped from the water whilst the elevated
level of [CO2] in the inert gas temporarily reduces the pH of the
water.
This simultaneously induces hypoxia and a condition
known as hypercapnia in marine life.
These conditions are fatal to many marine organisms.
(printout of Coldharbour webpage, Exhibit N of App. Br.)
In this regard, the Patent Owner notes that Requester Coldharbour
previously worked closely with the Patent Owner as evidenced by the article
"Ballast water treatment transatlantic alliance," Tanker Operator (July 25,
2008). (App. Br. 12; see also Decl. of Husain ¶ 9). Indeed, this article
establishes a marketing relationship between the Patent Owner and
Coldharbour in Europe and other selected markets.
However, the above evidence is inadequate to demonstrate
nonobviousness through copying. In this regard, the Patent Owner does not
identify what product or method practiced by Coldharbour copies the
invention of the ’859 patent; and how such a product or method satisfies all
of the limitations of a claim of the ’859 patent. Mere establishment of a
prior marketing relationship, and reference to simultaneous inducement of
hypoxia and hypercapnia, do not adequately establish that the product of
Coldharbour, or method practiced thereby, meets all the limitations of a
claim, or that copying occurred. "Not every competing product that
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arguably falls within the scope of a patent is evidence of copying." Iron
Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir.
2004).
[Copying] may be demonstrated either through internal
documents, see Akamai Techs., Inc. v. Cable & Wireless
Internet Servs., Inc., 344 F.3d 1186, 1196-97 (Fed. Cir.
2003); direct evidence such as disassembling a patented
prototype, photographing its features, and using the
photograph as a blueprint to build a virtually identical
replica, see Advanced Display Sys., Inc. v. Kent State Univ.,
212 F.3d 1272, 1285 (Fed. Cir. 2000); or access to, and
substantial similarity to, the patented product (as opposed to
the patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770
F.2d 1015, 1027 (Fed. Cir. 1985), overruled on other
grounds by, Midwest Indus., Inc. v. Karavan Trailers, Inc.,
175 F.3d 1356, 1359 (Fed. Cir. 1999) (en banc).

Iron Grip Barbell Co. Inc. v. USA Sports, Inc., 392 F.3d 1317, 1325 (Fed.
Cir. 2004). Moreover, the mere fact of copying is not necessarily dispositive
of nonobviousness. See Cable Electric Prods., Inc. v. Genmark, Inc.,
770 F.2d 1015, 1028 (Fed. Cir. 1985) ("[C]opying could have occurred out
of a general lack of concern for patent property . . . ."). There is insufficient
evidence to persuasively establish that copying occurred in the present case.
Thus, in our assessment, the statements of declarant Husain as to lack
of solutions and copying are conclusory assertions from an interested party,
which are inadequately supported by persuasive objective evidence and
analysis. Correspondingly, like the Examiner (RAN 97–99), we are not
persuaded that the Patent Owner has sufficiently demonstrated
nonobviousness of the claimed invention through secondary considerations.

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Remaining Rejections
The Examiner also rejected various claims in Rejections 1–4, 7, 8 and
10. However, Rejections 5, 6, 9, 11–16 have been affirmed supra, and thus,
all of the claims on appeal remain rejected. Correspondingly, Rejections 1–
4, 7, 8 and 10 are moot and we decline to reach the same.

ORDERS
1. Rejections 5, 6, 9, 11–16 are AFFIRMED, and thus, the rejection
of claims 2–6, 9, 10, 13–17, 19–31, 33–47 and 49–51 as being
obvious in view of the prior art is AFFIRMED.
2. The Examiner's rejection of all of the claims having been affirmed,
the remaining Rejections 1–4, 7, 8 and 10 are moot.

Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED

peb
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Third Party Requester:

GOODWIN PROCTER LLP
Patent Administrator
53 State Street
Exchange Place
Boston, MA 02109-2881

Patent Owner:

Bruce Owens
MYERS BIGEL SIBLEY & SAJOVEC, P.A.
4140 Parklake Avenue, Suite 600
Raleigh, NC 27612