UNITED STATES PATENT AND TRADEMARK OFFICE
`
`____________
`
`BEFORE THE PATENT TRIAL AND APPEAL BOARD
`
`____________
`
`TENNANT COMPANY,
`
`Petitioner,
`
`v.
`
`OXYGENATOR WATER TECHNOLOGIES, INC.,
`
`Patent Owner.
`
`____________
`
`Case IPR2021-00625
`
`Patent RE45415
`
`____________
`
`DECLARATION OF DR. RALPH E. WHITE
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`TABLE OF CONTENTS
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`Page
`
`
`Introduction ................................................................................................................................ 1
`I.
`II. Qualifications, Experience, Publications ........................................................................ 1
`III. Compensation ............................................................................................................................ 3
`IV. Materials Considered .............................................................................................................. 4
`V. Relevant Legal Principles ..................................................................................................... 6
`Person of Ordinary Skill in the Art ...................................................................... 6
`A.
`B.
`Claim Construction .................................................................................................... 7
`C. Anticipation Law ......................................................................................................... 8
`D. Obviousness Law ........................................................................................................ 9
`VI. Background of the Technology ....................................................................................... 12
`Electrolysis ................................................................................................................. 12
`A.
`B. Oxygen Bubbles vs. Dissolved Oxygen ......................................................... 13
`VII. The ‘415 Patent ...................................................................................................................... 15
`VIII. Petitioner’s Product .............................................................................................................. 19
`IX. Primary References .............................................................................................................. 20
`A. Wikey ............................................................................................................................ 20
`B. Davies ........................................................................................................................... 23
`X. Nanobubbles ............................................................................................................................ 29
`XI. Tremblay’s Reproductions ................................................................................................ 33
`A. Wikey Plate Orientation ........................................................................................ 33
`B. Wikey Electrode Size and Current .................................................................... 35
`C. Davies – Amperage ................................................................................................. 38
`D. Davies – Serpentine ................................................................................................ 39
`E. Davies – Straight-Through ................................................................................... 47
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`Davies – Bubbles Smaller than 15 Microns .................................................. 50
`F.
`XII. Testing Methodology ........................................................................................................... 52
`A. Chord Length Measurements .............................................................................. 52
`Conclusions from Test Results ........................................................................... 52
`B.
`XIII. Obviousness ............................................................................................................................ 54
`A. GROUND 2: Wikey in View of AFD ............................................................. 54
`B. GROUND 3: Wikey in View of AFD Wendt, Han, Glembotsky and
`Burns ............................................................................................................................. 55
`C. GROUND 4: Wikey in View of Clark ............................................................ 56
`D. GROUNDS 5-6 ......................................................................................................... 59
`E. GROUND 8: Davies in View of Hough ......................................................... 59
`GROUND 9: Davies in View of Erickson ..................................................... 60
`F.
`G. GROUND 10: Davies in View of Erickson and Hough ........................... 60
`H. GROUND 11: Davies in View of Erickson, Wendt, Han, Glembotsky,
`and Burns ..................................................................................................................... 60
`GROUND 12: Davies in View of Erickson, Hough, Wendt, Han,
`Glembotsky, and Burns ......................................................................................... 62
`GROUND 13: Davies in View of Schoeberl ................................................ 62
`J.
`K. GROUNDS 14-18 .................................................................................................... 62
`L. GROUND 19 ............................................................................................................. 62
`M. GROUNDS 20-24 .................................................................................................... 63
`XIV. Conclusion ............................................................................................................................... 64
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`I.
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` DECLARATION OF DR. RALPH WHITE
`
`
`
`I.
`
`Introduction
`
`1.
`
`I, Ralph E. White, provide the following declaration identifying my
`
`opinions and bases therefore concerning certain issues in the Petition for Inter
`
`Partes Review of U.S. Patent No. RE45,415 (“the ’415 patent,” Ex. 1001). I reside
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`in the State of South Carolina and maintain an office located at the University of
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`South Carolina, Columbia, South Carolina, 29208.
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`2.
`
`I am a Professor of Chemical Engineering in the Department of
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`Chemical Engineering at the University of South Carolina.
`
`3.
`
`I have been retained on behalf of Oxygenator Water Technologies, Inc
`
`(“OWT”) in the above-captioned matter as an independent technical expert.
`
`4.
`
`I have been asked by counsel for OWT to review U.S. Patent Nos.
`
`RE45,415 (respectively “the ’415 patent”) and Petitioner’s Petition and supporting
`
`exhibits.
`
`II. Qualifications, Experience, Publications
`
`5.
`
`I have almost fifty years of experience in the field of chemical
`
`engineering with research interests targeted to electrochemical systems,
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`mathematical modeling, electrolysis, batteries, corrosion, and electrodeposition.
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`6.
`
`In 1971, I graduated with a B.S. in Engineering from the University of
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`South Carolina. In 1973, I obtained my M.S. in Chemical Engineering from the
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`University of California at Berkeley. In 1977, I obtained my Ph.D. in Chemical
`
`Engineering from the University of California at Berkeley.
`
`7.
`
`I worked as a Chemical Engineer for Ethyl Corporation in the summer
`
`of 1970, as a Nuclear Engineer for Mare Island Naval Shipyard in the summer of
`
`1971, and as a Research Engineer for Chevron in the summer of 1972. Since
`
`obtaining my Ph.D. I have worked as a consultant for over 15 companies,
`
`including Dow Chemical, Boeing, Celgard, and Energizer.
`
`8.
`
`I worked at Texas A&M University from 1977 through 1993, during
`
`which time I held the positions of Assistant Professor, Associate Professor, and
`
`Professor, before serving as the Associate Head of the Department of Chemical
`
`Engineering. In 1993, I moved to the University of South Carolina. I have held the
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`roles of Chair of the Department of Chemical Engineering, Director of the Center
`
`for Electrochemical Engineering, and Dean of the College of Engineering and
`
`Computing. I am currently a Professor and Distinguished Scientist at the
`
`University of South Carolina.
`
`9.
`
`I have received numerous honors and awards throughout my career,
`
`including the Battery Division Research Award from The Electrochemical Society,
`
`Inc. in 1991, the Best Paper of the Conference at the Fifth Annual Battery
`
`Conference on Applications and Advances in 1990, the E. H. Brockett Professor of
`
`Chemical Engineering honor in 1990, the Scientific Achievement Award by the
`
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`American Electroplaters and Surface Finishers Society in 1999, and several major
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`awards from The Electrochemical Society (Olin Palladium, Vittorio de Nora, and
`
`Linford).
`
`10.
`
` I am a member of several societies including, the American Institute
`
`of Chemical Engineers, the National Society of Professional Engineers, The
`
`Electrochemical Society, and the National Association for the Advancement of
`
`Science.
`
`11.
`
`I worked for Dow Chemical as a consultant from 1979 to 1993 on the
`
`electrolysis of brine to produce chlorine gas, hydrogen gas, and aqueous sodium
`
`hydroxide. This work resulted in several publications on this subject. I have also
`
`served as a consultant to other companies for the electrolysis of water to produce
`
`hydrogen and oxygen gases.
`
`12. A detailed description of my professional qualifications, including
`
`publications and a listing of my specialties/expertise and professional activities, is
`
`contained in my curriculum vitae which is Exhibit 2158.
`
`III. Compensation
`
`13.
`
`I am being compensated on an hourly basis at the rate of $400/hour
`
`for my work performed in connection with this proceeding. I have received no
`
`additional compensation for my work in this case, and my compensation does not
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`depend in any way upon the contents of this report, any testimony I may provide,
`
`or the ultimate outcome of this proceeding.
`
`IV. Materials Considered
`
`14. My technical review, analysis, insights, and opinions are based on my
`
`experience and other qualifications discussed above, as well as my study of
`
`relevant materials.
`
`15.
`
`In preparing this declaration, I have reviewed the following materials,
`
`among other things:
`
`• The ’415 Patent and its prosecution history (Ex. 1101, 1102)
`
`• Petition for Inter Partes Review of U.S. Patent No. RE45,415 (the
`’415 Patent) – Case IPR2021-00625 and its exhibits including:
`o Declaration of Dr. Mario Tremblay (Ex. 1103)
`o U.S. Patent No. 3891,535 (“Wikey”) (Ex. 1112)
`o U.S. Patent No. 4,917,782 (“Davies”) (Ex. 1105)
`o U.S. Patent No. 4039,439 (“Clark”) (Ex. 1106)
`o U.S. Patent No. 3,984,303 (“Peters”) (Ex. 1109)
`o U.S. Patent No. 5,324,398 (“Erickson) (Ex. 1107)
`o U.S. Patent No. 6,296,756 (“Hough”) (Ex. 1111)
`o U.S. Patent No. 5,439,576 (“Schoeberl”) (Ex. 1108)
`o Wendt (Ex. 1117)
`o Aquariums for Dummies (Ex. 1114)
`o Glembotsky (Ex. 1123)
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`o Burns (Ex. 1131)
`o Burns (Ex. 1134)
`o Han (Ex. 1137)
`• Deposition transcript of Dr. Mario Tremblay (IPR 2021-00625), dated
`May 27, 2021, and its exhibits, including:
`o Tremblay Exhibit 2112 – TC_IPR_156
`o Tremblay Exhibit 2113 – TC_IPR_158
`o Tremblay Exhibit 2114 – Picture of Wikey electrolysis apparatus
`o Tremblay Exhibit 2115 – TC_IPR_272
`o Tremblay Exhibit 2116 – TC_IPR_273
`o Tremblay Exhibit 2117 – TC_IPR_259
`o Tremblay Exhibit 2118 – TC_IPR_298
`o Tremblay Exhibit 2119 – TC_IPR_276
`• V. S. Bagotsky, Fundamentals of Electrochemistry, Second Edition,
`Wiley, 2006 (Ex. 2190)
`
`• Deposition transcript of Mr. Bruce Field (Ex. 2176)
`
`• Deposition transcript of Dr. Russell Pylkki (Ex. 2177)
`
`• A sparger CAD drawing produced by Tennant in the District Court
`litigation (Ex. 2184)
`
`• https://www.swimuniversity.com/hot-tub-pump (Ex. 2192)
`
`• https://poolplaza.com/pool-pump-sizing (Ex. 2191)
`
`• The District Court’s Claim Construction Order (Ex. 2111)
`
`• Zhu et al., Cleaning with Bulk Nanobubbles, Langmuir (Ex. 2195)
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`• https://www.fondriest.com/environmental-
`measurements/parameters/water-quality/dissolved-oxygen (Ex. 2187)
`
`• ParticleTrack G400 Hardware Manual (Ex. 2189)
`
`• Particle Characterization Brochure – EasyViewer (Ex. 2188)
`
`• Capriano et al., Bubble and Aerosol Spectra Produced by a Laboratory
`‘Breaking Wave’, Journal of Geophysical Research (1981) (Ex. 2193)
`
`• Dallmann et al., Impacts of Suspended Clay Particle Deposition on
`Sand-Bed Morphodynamics, Water Resources Research (Ex. 2186)
`
`• https://www.cleanwaterstore.com/resource/how-to-guides/how-to-
`remove-sediment-from-well-spring-water/ (Ex. 2196)
`
`• https://www.epa.gov/caddis-vol2/caddis-volume-2-sources-stressors-
`responses-sediments#tab-6 (Ex. 2194)
`
`• Any additional information or documents discussed in my expert
`report that are not listed above.
`V. Relevant Legal Principles
`
`
`
`A. Person of Ordinary Skill in the Art
`
`16.
`
`I have been informed that a person of ordinary skill in the art
`
`(“POSA”) is a person who is presumed to be aware of the relevant prior art and
`
`who would think along the lines of conventional wisdom in that art. The person of
`
`ordinary skill in the art has ordinary skill and creativity but does not have
`
`extraordinary skill. I have been informed that factors to consider in determining the
`
`level of ordinary skill in the art include the educational level of workers in the
`
`field, the types of problems addressed in the art, prior-art solutions to such
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`problems, how quickly innovations are made, and the complexity of the
`
`technology, and the level of predictability in the field.
`
`17. The ’415 patent relates to technology for oxygenating water by
`
`creating microbubbles and nanobubbles of oxygen using electrolysis of water.
`
`Specifically, the ’415 patent is directed to electrolytic processes and structures that
`
`are efficient and effective at creating microbubbles and nanobubbles of oxygen in
`
`water. Petitioner has suggested that a POSA would have had a degree in chemistry,
`
`chemical engineering, or a similar discipline and at least two years of experience
`
`with electrolysis systems. I have been instructed to apply this level of ordinary skill
`
`for purposes of my analysis in this declaration.
`
`18. Throughout my declaration, even if I discuss my analysis in the
`
`present tense, I am always making my determinations based on what a POSA
`
`would have known at the time of the invention.
`
`
`
`B. Claim Construction
`
`19.
`
` I have been informed that the claim terms should be construed as they
`
`would have been understood by one skilled in the art at the time of the invention
`
`who is deemed to have read the claims, specification, and prosecution history
`
`(which I understand is called the “intrinsic record”). For the purpose of this
`
`declaration, I have been told to assume that the applicable date of the invention for
`
`the Patent, which is known as the “priority date”, is on December 10, 2003. My
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`testimony about the below claim terms would not change if the priority date were
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`determined to be a year or two before this date. To be clear, I have not been asked
`
`to analyze or offer any opinions about what priority date the Patent is entitled to.
`
`20.
`
`I have been informed that the proper context for construing the
`
`meaning of claim terms is the intrinsic record, i.e., the language of the claims, the
`
`disclosure in the patent, and pertinent statements in the relevant prosecution
`
`history. I understand that other evidence, such as relevant scientific literature, can
`
`also be considered when interpreting the claims, but that it is secondary to the
`
`intrinsic record and can only be relied upon if it is consistent with the intrinsic
`
`record.
`
`21.
`
`I understand that the district court has rendered an opinion on the
`
`appropriate construction for several terms in the Patent. I understand that each of
`
`these terms was fully briefed and thoroughly considered by the district court.
`
`
`
`C. Anticipation Law
`
`22.
`
`In this declaration I have been instructed by counsel on the law
`
`regarding anticipation, inherency, and obviousness.
`
`23.
`
`I understand that a patent claim is invalid for anticipation if, and only
`
`if, a single reference discloses each and every limitation of a claim. I understand
`
`that the disclosure in the reference can be either explicit or inherent. I understand
`
`that an aspect of a claim that is not explicitly disclosed in a reference can be found
`
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`inherent only if that aspect is necessarily and inevitably present in the teachings of
`
`the reference. I understand that the probability or likelihood of an aspect being
`
`present is legally insufficient to establish inherency. I also understand that it is the
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`Petitioner’s burden to show by a preponderance of the evidence that an aspect not
`
`explicitly disclosed is otherwise necessarily and invariably present.
`
`
`
`D. Obviousness Law
`
`24.
`
`I understand that a patent claim can also be invalid if the claims would
`
`have been obvious to a POSA at the time of the invention. I understand that a claim
`
`is obvious when the differences between the subject matter sought to be patented
`
`and the prior art are such that the subject matter as a whole would have been
`
`obvious to a POSA at the time of the invention.
`
`25.
`
`I understand that the obviousness inquiry should not be done in
`
`hindsight (e.g., by starting with the claimed invention and then looking for prior art
`
`that teaches the elements of that claimed invention) but rather from the perspective
`
`of a POSA as of the time of the invention without knowledge of the claimed
`
`invention.
`
`26.
`
`I understand that certain objective indicia can be important evidence
`
`regarding whether or not a claim in a patent is obvious. Such indicia include:
`
`industry acceptance; commercial success of products covered by the patent claims;
`
`long-felt need for the invention; failed attempts by others to make the invention;
`
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`copying of the invention by others in the field; unexpected results achieved by the
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`invention as compared to the closest prior art; praise of the invention by the
`
`infringer or others in the field; taking of licenses under the patent by others;
`
`expressions of surprise by experts and those skilled in the art at making the
`
`invention; and the patentee proceeded contrary to the accepted wisdom of the prior
`
`art. I have not been asked to consider such secondary considerations for purposed
`
`of this declaration.
`
`27.
`
`I understand that obviousness can be established by combining
`
`multiple prior art references to meet each and every claim element. I also
`
`understand that to support a combination of multiple prior art references, there
`
`must be a rationale explaining why a POSA would combine the references in the
`
`manner claimed and how the proposed combination meets each and every claim
`
`element. I also understand that a proposed combination of references can be
`
`susceptible to hindsight bias, and the requirement for a motivation to consider
`
`references in combination, and for a motivation to modify one prior art reference
`
`based on teachings of the other prior art references, serves to prevent a challenger
`
`from relying on hindsight. When it appears hindsight bias is being used, I
`
`understand the modification or combination is not considered obvious.
`
`28.
`
`I understand that rationales that may support a conclusion of
`
`obviousness can include: combining prior art elements according to known
`
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`methods to yield predictable results; substituting one known element for another
`
`known element to obtain a predictable result; using a known technique to improve
`
`similar devices in the same way; choosing from a finite number of identified,
`
`predicable solutions, with a reasonable expectation of success; and some teaching,
`
`suggestion, or motivation in the prior art that would have led one of ordinary skill
`
`to modify the prior art reference or to combine prior art teachings to arrive at the
`
`claimed invention.
`
`29.
`
`I understand that if the proposed combination results in one or more of
`
`the references being unsatisfactory for its intended purpose, a POSA would not
`
`have had a motivation to combine or modify the reference(s).
`
`30.
`
`I understand that if the proposed combination changes the principle of
`
`operation of one or more references, a POSA would not have had a motivation to
`
`combine or modify the reference(s).
`
`31.
`
`I understand that teaching away, e.g., discouragement from making
`
`the proposed modification, is strong evidence that the references are not
`
`combinable. I also understand that a disclosure of more than one alternative does
`
`not necessarily constitute a teaching away.
`
`32.
`
`I understand that obviousness requires the challenger to prove that a
`
`POSA would have had a reasonable expectation of success in combining the
`
`teachings of prior art references or in modifying the prior art to arrive at the
`
`
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`claimed invention. That being said, I understand that the combination does not
`
`need to result in the single-most desirable embodiment.
`
`VI. Background of the Technology
`
`
`
`A.
`
`Electrolysis
`
`33. Electrolysis is the process of chemical decomposition produced by
`
`using electrodes to pass an electric current through a liquid containing ions, which
`
`is referred to as an electrolyte.
`
`34. Many variables are considered in the design of electrolysis processes
`
`and systems. The number of electrodes used and their size, material, coatings,
`
`shape, and relative positions within the electrolytic cell can have significant effects
`
`on the electrolytic process. Other relevant variables that can significantly affect the
`
`electrolytic process include the fluid flow rate (if any), voltage, current,
`
`temperature, and electrolyte composition.
`
`35. The electrolysis of water to create oxygen bubbles is affected, both as
`
`to whether bubbles will form and the size of any bubbles formed, by each of these
`
`variables. Specifically, the formation and size of oxygen bubbles is affected by, at
`
`least, the following physical and/or chemical phenomenon: (1) the rate of
`
`electrolysis, (2) the specific chemistry caused by the electrolysis, (3) the force
`
`required to detach a bubble from an electrode, and (4) the force applied to a bubble
`
`as the electrolyte flows by the electrode.
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`36. Each of the variables listed in paragraph 34 above affect one or more
`
`of the physical and/or chemical phenomenon listed in paragraph 35. The way these
`
`variables each affect the physical and/or chemical phenomenon is described in
`
`more detail below. The Fundamentals of Electrochemistry textbook discusses some
`
`of the factors that can affect the outcome of the electrolysis process. See, Ex. 2190
`
`at pp. 13-14.
`
`
`
`
`B. Oxygen Bubbles vs. Dissolved Oxygen
`
`37. A bubble of oxygen is the presence of oxygen that is in the gas phase
`
`within the liquid phase of water. Ex. 2190 at pp. 9-10 (“The nuclei and the
`
`elements of new phase generated from them (gas bubbles”); see also FIGURE 14.8
`
`at p. 13.
`
`In contrast, dissolved oxygen refers to an oxygen molecule that is dissolved within
`
`and part of the liquid phase of water. Id. at p. 14 (“In gas evolution, this is the step
`
`that produces gas molecules dissolved in the electrolyte”). Thus, dissolved oxygen
`
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`13
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`is oxygen in the liquid phase of water, whereas an oxygen bubble refers to oxygen
`
`in the gas phase in the liquid phase of water. Dissolved oxygen is not in the gas
`
`phase and is therefore not a bubble.
`
`38. The first step in the electrolysis of liquid water is the production of
`
`dissolved hydrogen and oxygen molecules. Id. at pp. 9-10 (“The first step in
`
`reactions of the type to be considered here is the usual electro-chemical step,
`
`which produces the primary product that has not yet separated out to form a new
`
`phase.”). If the conditions are supportive, the hydrogen and/or oxygen molecules
`
`formed via electrolysis can nucleate forming a gas phase in the liquid water. Id. at
`
`9-10, 12 (“Two conditions must be fulfilled for spontaneous nucleation: (1) the
`
`chemical potential of the primary product should be no less than µnucl, and (2)
`
`conditions enabling the “encounter” of Nnucl particles of the primary product
`
`should exist”). It is possible to create dissolved oxygen molecules via electrolysis
`
`of water without creating a bubble of oxygen.
`
`39.
`
`I understand that in the corresponding litigation, Tennant and OWT
`
`have agreed that the phrase “a suspension comprising oxygen microbubbles and
`
`nanobubbles” be construed as “a mixture including microbubbles and nanobubbles
`
`that are dispersed within but undissolved in the water”. Thus, Tennant and OWT
`
`have agreed, as do I, that dissolved oxygen is not considered a bubble of oxygen.
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`VII. The ’415 Patent
`
`40. The ’415 patent is directed to the oxygenation of water through the
`
`creation of microbubbles and nanobubbles of oxygen via electrolysis. Increasing
`
`the amount of oxygen dissolved in water can be desirable to, for example, provide
`
`additional oxygen for plants or animals or as a means to break down organic
`
`pollutants in the water. A common way of oxygenating water at the time of the
`
`invention was by blowing compressed air or oxygen gas into the water.
`
`41.
`
`Independent claim 13 of the ’415 patent is directed to a “method for
`
`producing an oxygenated aqueous composition”. As a method, I understand this
`
`claim to be directed to a process in which an oxygenated aqueous suspension is
`
`produced. Claim 13 recites several steps included in the process. At a high level,
`
`the steps include “flowing water … through an electrolysis emitter”, “causing
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`electricity to flow … to the electrodes”, and “producing … a suspension
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`comprising oxygen microbubbles and nanobubbles in the water”.
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`42. The patent specification explains this process and describes that the
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`distance between the anode and cathode used for electrolysis affects whether the
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`oxygen formed at the anode is in microbubble and nanobubble form. The
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`specification defines a distance that creates microbubbles and nanobubbles as a
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`“critical distance”. Ex. 1101 at 4:1-6. I understand that the Petitioner and Dr.
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`Tremblay agree that the term “critical distance” as used in the ’415 patent has this
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`meaning. Pet. at 17; Ex. 1103 at 12. The specification describes that this “critical
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`distance” can range from 0.005 to 0.140 inches. Ex. 1101 at 3:14-15.
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`43. Despite agreeing with the functional definition of critical distance,
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`Petitioner suggests that a POSA would understand the ’415 patent to teach that
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`anytime an anode and cathode are separated within the range of 0.005 to 0.140
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`inches, then microbubbles and nanobubbles will necessarily be formed. Pet. at pp.
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`9-12, 31-32. I disagree. The ’415 patent states that the critical distance can be
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`within this range but does not state that microbubbles and nanobubbles are always
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`produced when the electrodes are separated in this range. A POSA would have
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`known that bubble creation is affected by other parameters, such as voltage,
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`current density, electrode size/configuration, flow rate, water chemistry, and
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`temperature. Moreover, these factors are interrelated as the size and the
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`configuration of the electrodes, flow rate, water chemistry, and temperature can
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`affect the current density.
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` For these
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`reasons, a POSA would understand the definition in the specification for the term
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`“critical distance” does not mean that a particular electrode spacing alone
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`necessarily results in microbubbles and nanobubbles of oxygen. Instead, whether a
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`IPR2021-00625
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`particular electrode gap will support the formation of microbubbles and
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`nanobubbles is also dependent on other variables of the system. Statements made
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`by the Examiner during prosecution, which I address in paragraphs 45-46 below,
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`confirm my analysis of this issue.
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`44. Petitioner also suggests that the ’415 patent states that anytime
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`microbubbles and nanobubbles are created, those microbubbles and nanobubbles
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`supersaturate the water. Again, a POSA would not understand the ’415 patent as
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`making any such statement. The ’415 patent discusses supersaturation several
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`times, each time indicating that microbubbles and nanobubbles can supersaturate
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`the water, but never stating that such supersaturation always occurs. Ex. 1101 at
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`2:66-3:3; 4:27-41. Conversely, the ’415 patent indicates that a significant
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`production of microbubbles and nanobubbles over time can cause the water to
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`reach supersaturation. Id. at 6:33-37; 9 (Table III). The water is not automatically
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`supersaturated once some modicum of microbubbles or nanobubbles are produced.
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`In fact, if a sufficient number of microbubbles or nanobubbles are not produced
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`based on the flow rate of water, flowing water may never reach supersaturation.
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`45. My review of the prosecution history indicates that the method of
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`claim 13 was determined to be patentable because the prior art did not disclose or
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`suggest a method of producing an oxygenated aqueous composition based on the
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`combination of claimed parameters. The Examiner stated:
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`[t]he prior art does not disclose nor fairly suggest the method for
`producing oxygenated aqueous composition comprising the
`combination of the critical distance between the cathode and anode of
`.0005-0.140, the voltage maximum of about 28.3 volts, and 13 or less
`amperages with a maximum of 12 gallons per minute such that it
`results in the formation of a suspension comprising oxygen
`microbubbles and nanobubbles in the water, the nanobubbles having a
`bubble diameter of less than 50 microns.
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`Ex. 1102 at p. 0025.
`46. During prosecution, the Examiner provided additional statements that
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`the specific parameters of the process, and not just the electrode spacing, were
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`important in finding the claim patentable. For example, the Examiner stated:
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`[t]he formation of bubbles is a function of flow rates, temperatures,
`liquid viscosity, voltage or current output of the electrodes etc., and
`not just of electrode spacing.
`
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`Ex. 1102 at p. 0169.
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`47. A POSA would not read either the patent specification or the
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`prosecution history to suggest that every electrolysis system that includes
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`electrodes separated in the range of 0.005 to 0.140 inches would create
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`microbubbles and nanobubbles. Instead, a POSA would understand the patent as
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`stating that the distance between the anode and a cathode is one critical parameter
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`for producing micro and nanobubbles, not the only parameter. This would be
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`straightforward to a POSA who reviewed the specification and prosecution history,
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`as he or she would know that while certain parameters are important to achieve a
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`particular outcome, electrolytic processes are not governed by a single variable. As
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`stated above and expanded upon below, each of the variables identified in
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`paragraph 34 would affect the size of bubbles created by electrolysis of water.
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`48. For these reasons, I believe a POSA would have understood claim 13
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`to recite a process for oxygenating water by producing a suspension comprising
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`oxygen microbubbles and nanobubbles