Application of Zierden
| Decision Date | 19 June 1969 |
| Docket Number | Patent Appeal No. 8161. |
| Citation | 411 F.2d 1325 |
| Parties | Application of Theodore W. ZIERDEN. |
| Court | U.S. Court of Customs and Patent Appeals (CCPA) |
Eugene F. Buell, Buell, Blenko & Ziesenheim, Pittsburgh, Pa., attys. of record, for appellant.
Joseph Schimmel, Washington, D. C., for Commissioner of Patents. Jack E. Armore, Washington, D. C., of record.
Before RICH, Acting Chief Judge, DURFEE and NEESE, Judges, sitting by designation and ALMOND and BALDWIN, Associate Judges.
This appeal is from the decision of the Patent Office Board of Appeals, adhered to on reconsideration, affirming the rejection of claims 1, 2, and 6 of application serial No. 352,337, filed March 16, 1964, entitled "Methods and Compositions for Removing Alluvium and Other Deposits in Water Systems." Six claims have been allowed.
The appealed claims are for a method (claims 1 and 2) and composition (claim 6) useful for removing and preventing alluvium deposits in water systems where the water employed is derived from "rivers, ponds, lakes or other sources of impure natural waters," as, for example, in industrial cooling systems. The meaning which appellant ascribes to the term "alluvium" appears from the following excerpt from his specification:
* * * silt, mud, and/or organic wastes and other accumulations in natural waters which deposit on heat exchange surfaces and create problems of corrosion, loss of heat transfer efficiency, and the like, as well as reducing the area of the passageways and thus the amount of cooling water which can be circulated.
Locations where such alluvium may present such problems, mentioned in the specification, include cooling systems in blast furnaces, open-hearth furnaces and the like in the steel industry; cooling towers in the oil industry; surface condensers associated with turbine generators; pipes, sewers, and heated water lines; and ship ballast tanks into which river water may be pumped.
Appellant has discovered that deposits of alluvium in such water systems can be removed and prevented by adding to the water in the systems "insoluble potassium metaphosphate and a solubilizing agent therefor."
The appealed claims read:
The references relied on are:
Primary: French Patent 901,765 Nov. 13, 1944
Secondary: Zimmie et al. 3,085,916 Apr. 16, 1963
Freedman 3,173,864 Mar. 16, 1965
(filed Feb. 8, 1961)
Betz Handbook of Industrial Water Conditioning
5th Ed., 1958, pages 148-178
The rejection of the three appealed claims is on the ground of unpatentability over the French patent alone or in view of each of the secondary references, no statutory ground having been stated. The solicitor's brief says it may be considered to be based on both 35 U. S.C. §§ 103 and 102(b). We will so treat it.
The French patent discloses the treatment of "industrial waters," without any amplification of the meaning of that term with respect to the source of the water. The only purpose for which the examiner cited the secondary references, in the words of the final rejection, was "primarily only to show that all industrial cooling waters contain deposit-forming sand, silt, mud, etc., which is considered to be the `alluvium' recited." A different examiner, writing the examiner's Answer, amplified this somewhat but took essentially the same position. The board treated them in accordance with the statement in the final rejection.
Appellant acknowledges that the French patent discloses addition of "insoluble potassium metaphosphate and a solubilizing agent therefor" (the same materials employed by appellant) to "industrial waters" used in industrial heating and cooling water systems for the purpose of preventing the deposition of calcium carbonate scale in such systems. Appellant also tacitly acknowledges that the recitation of "a compatible dispersing agent" in claims 2 and 6 is not in itself of patentable significance. Appellant contends, however, that the French patent does not disclose that alluvium was present in the "industrial waters" treated and that, in any event, the French patent does not disclose or suggest that alluvium deposition, as well as calcium carbonate deposition, from industrial waters can be prevented by adding thereto the composition employed by appellant and the French patentee.
We agree with appellant that it is necessary to observe a distinction between the deposition of scale, which is the subject expressly dealt with by the French patent, and the problem of removing or preventing the accumulation of alluvium. Scale and alluvium have different origins and causes and cannot always be prevented or removed in the same ways. This is clearly shown by appellant's specification and by the prior art references.
The peculiar — if not unique — aspect of this case is that it so happens that the scale prevention method and compositions of the French patent are also effective to remove and prevent alluvium accumulations in water systems. The question here is whether that suffices to negative the patentability of the appealed claims. A corollary question which is strenuously debated by both parties is whether those skilled in the art would know, from the teaching of the French patent, that its scale prevention technique is also effective to prevent or remove deposits of alluvium, the latter being appellant's discovery. These are the questions we must decide.
To make the matter clear it is necessary to develop somewhat further the differences in the essential natures of the two problems. Alluvium, as above indicated, consists of materials in the nature of silt, such as mud, organic matter, fine sand, and rust, which come into the water system in suspension and tend to settle out and clog up the apparatus or fill up such vessels as ballast tanks. Appellant's brief characterizes it as a gravity problem. The application at bar explains that a ballast tank on a river boat, for example, instead of filling up with silt which has to be shovelled out periodically, when filled with water treated in accordance with the invention, does not silt up. Rather than settling, the silt remains light and fluid and readily drains out along with the water. In other words, it remains in suspension and is no problem. Appellant says it is a flocculation phenomenon.
Scale, on the other hand, is a chemical deposition, primarily of calcium carbonate, which deposits on the metal surfaces and adheres to them. The French patent explains that scale formation is the result of temperature change which causes insoluble calcium carbonate to form from soluble calcium bicarbonate which is in solution in the water. Prior to the French patent, various water-treatment methods were known for preventing scale deposition, including treatment with certain soluble phosphate compounds. The invention of the patent resided in the use of particular phosphate compounds, namely, insoluble alkaline metaphosphates in combination with a solubilizer such as sodium sulfate or sodium chloride. It was discovered that less of the latter would produce the desired effect than with the soluble phosphates. The patent explains the mechanism thus:
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