Masahiro Ogasawara

Patent Trials and Appeals Board

Dec 17, 2021

2021002043 (P.T.A.B. Dec. 17, 2021)

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.
13/499,694 03/31/2012 Masahiro Ogasawara 6041.2.3 4151
23484 7590 12/17/2021
John Ogilvie
2148 E. 11270 S.
Sandy, UT 84092
EXAMINER
SAHAND, SANA
ART UNIT PAPER NUMBER
3792
NOTIFICATION DATE DELIVERY MODE
12/17/2021 ELECTRONIC
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.
Notice of the Office communication was sent electronically on above-indicated "Notification Date" to the
following e-mail address(es):
john@OgilvieLawFirm.com
johnwogilvie@gmail.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte MASAHIRO OGASAWARA
____________

Appeal 2021-002043
Application 13/499,6941
Technology Center 3700
____________

Before JOSEPH A. FISCHETTI, BRUCE T. WIEDER, and
KENNETH G. SCHOPFER, Administrative Patent Judges.

WIEDER, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal under 35 U.S.C. § 134 from the
Examiner’s final rejection of claims 16, 21, 38–41, and 43–52. We have
jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM-IN-PART.

1 We use the word “Appellant” to refer to “applicant” as defined in
37 C.F.R. § 1.42. Appellant identifies the real party in interest as Mignon
Belle, Co., Ltd. (Appeal Br. 1.)
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CLAIMED SUBJECT MATTER
Appellant’s invention relates to a sleep inducing apparatus and
method that “leads people to sound sleep by diffusing ultra-narrow band
light in blue to green having a half bandwidth of 10 nm or less.” (Spec. ¶ 1.)
Claims 16, 21, and 38 are the independent claims on appeal. Claim 16
is illustrative. It recites:
16. A sound sleep inducing method characterized in that:
projecting ultra-narrow band light in blue having a peak
wavelength range of 450 to 470 nm and a half bandwidth of 10
nm or less to an entire face of a person with illuminance at an eye
position in the face being 20 to 120 lux;
controlling an irradiation energy of the light in blue at an
irradiated portion in the face to be less than 1.0 J/cm2; and
controlling an irradiation time in the light in blue to be
from 5 to 15 minutes.

REJECTIONS
Claims 16, 21, and 43–50 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Searfoss (US 2008/0123332 A1, pub. May 29, 2008)
(hereinafter “Searfoss ’332”), Savage, Jr. (US 2004/0138726 A1, pub.
July 15, 2004) (hereinafter “Savage”), Searfoss (US 5,265,598, iss.
Nov. 30, 1993) (hereinafter “Searfoss ’598”), Heller (US 6,623,512 B1, iss.
Sept. 23, 2003), and Kondo (JP 2007-044201A, pub. Feb. 22, 2007).
Claims 38–41, 51, and 52 are rejected under 35 U.S.C. § 103(a) as
unpatentable in view of Searfoss ’332, Savage, and Searfoss ’598.

ANALYSIS
Obviousness is a legal conclusion involving a determination of
underlying facts.
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Under § 103, the scope and content of the prior art are to be
determined; differences between the prior art and the claims at
issue are to be ascertained; and the level of ordinary skill in the
pertinent art resolved. Against this background, the obviousness
or nonobviousness of the subject matter is determined. Such
secondary considerations as commercial success, long felt but
unsolved needs, failure of others, etc., might be utilized to give
light to the circumstances surrounding the origin of the subject
matter sought to be patented.

KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406 (2007) (quoting Graham v.
John Deere Co. of Kansas City, 383 U.S. 1, 17–18 (1966)).
When it is necessary to select elements of various teachings in
order to form the claimed invention, we ascertain whether there
is any suggestion or motivation in the prior art to make the
selection made by the applicant. . . . The extent to which such
suggestion must be explicit in, or may be fairly inferred from, the
references, is decided on the facts of each case, in light of the
prior art and its relationship to the applicant’s invention.
In re Gorman, 933 F.2d 982, 986–87 (Fed. Cir. 1991). Regardless, an
obviousness “analysis need not seek out precise teachings directed to the
specific subject matter of the challenged claim, for a court can take account
of the inferences and creative steps that a person of ordinary skill in the art
would employ.” KSR Int’l, 550 U.S. at 418. Indeed, it is “proper for a
patent examiner to rely on ‘common knowledge and common sense of the
person of ordinary skill in the art without any specific hint or suggestion in a
particular reference.’” Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d
1324, 1328 (Fed. Cir. 2009) (quoting In re Bozek, 416 F.2d 1385, 1390
(CCPA 1969)). Nonetheless, “there must be some articulated reasoning with
some rational underpinning to support the legal conclusion of obviousness.”
KSR Int’l, 550 U.S. at 418 (quoting In re Kahn, 441 F.3d 977, 988 (Fed. Cir.
2006)).
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Teaching away
Appellant argues that “[a]ll of the current rejections combine
Searfoss [’]598 with Savage. However, this combination is improper
because these references teach away from each other where the claimed
invention is concerned.” (Appeal Br. 6.) Specifically, Appellant argues that
“Searfoss [’]598 teaches directing light ‘directly into’ or ‘towards’ an
observer’s eyes” and “Savage teaches avoidance of directing light into a
subject’s eyes: ‘the light is directed to the entire body, including the eyes,
requiring eye shields or shades to be used.’” (Id. (quoting Savage ¶ 8).)
Appellant also argues that Savage “refers throughout his disclosure to
delivering light to a ‘non-ocular’ region of the body (e.g., chest, neck, arm,
abdomen), thereby expressly excluding direction of light at the eyes.” (Id.
(emphasis omitted).) We do not find these arguments persuasive.
As an initial matter, we note that the Examiner relies on Savage,
Searfoss ’598, Kondo, and Heller to modify Searfoss ’332. We also note
that “[a] reference may be said to teach away when a person of ordinary
skill, upon reading the reference, would be discouraged from following the
path set out in the reference, or would be led in a direction divergent from
the path that was taken by the applicant.” In re Gurley, 27 F.3d 551, 553
(Fed. Cir. 1994). “Under the proper legal standard, a reference will teach
away when it suggests that the developments flowing from its disclosures
are unlikely to produce the objective of the applicant’s invention.” Syntex
(U.S.A.) LLC v. Apotex, Inc., 407 F.3d 1371, 1380 (Fed. Cir. 2005).
However, “[a] statement that a particular combination is not a preferred
embodiment does not teach away absent clear discouragement of that
combination.” Id.
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Searfoss ’332 discloses “a nightlight constructed for bedside
placement which produces light at specific light wavelengths and intensity to
provide physiological effects on the user” that preferably uses at least three
sets of LEDs (light emitting diodes) to produce various light modes.
(Searfoss ’332 ¶¶ 8, 34.) The Searfoss ’332 invention provides a sleep
readiness mode with “light at between 20-200 lumens” (id. ¶ 35), a sleep
help mode with light “between 5 lumens and 50 lumens” (id. ¶¶ 37, 40), and
a wake-up mode with light “between 1,000 and 1,800 lumens” (id. ¶ 42).
Searfoss ’332 discloses that the light in sleep readiness mode “is preferably
dim so as to promote relaxation, but of a sufficient brightness to allow a
person to perform simples tasks.” (Id. ¶ 35.) In short, the nightlight of
Searfoss ’332 delivers light to both ocular and non-ocular areas of the body
of the user.
Searfoss ’332 teaches use of a “narrow band of light . . . stretching
from approximately 450 nm-540 nm.” (Id. ¶ 37.) However, the Examiner
finds that Searfoss ’332 does not specifically teach “a peak wavelength
range of 450-470 nm,” as recited in claim 16. (Final Action 7.) The
Examiner finds that Savage teaches the use of 465–470 nm wavelength blue
light, and particularly “467 nm [wavelength light] for treating sleep
disorders and circadian cycle problems.” (Answer 4 (quoting Savage ¶ 48).)
Additionally, the Examiner determines that “it would have been obvious to
one of ordinary skill in the art . . . to modify [the] Searfoss ’332 invention by
incorporating a blue light at peak wavelength 465-470 nm, particularly 467
nm, as taught by Savage, because doing so facilitates treatment of sleep
disorder.” (Final Action 8 (emphasis omitted).)
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Savage’s invention is “a portable device for delivering light to the
blood supply of a human body to treat jaundice, excessive bilirubin, mood
disorders, sleep and body cycle problems in humans.” (Savage ¶ 3.)
Savage’s invention “involves providing light to areas of the body where
there are substantial blood vessels near the surface of the skin, the vascular
tissue regions, so that the light can interact with photoactive substances in
the blood to correct various problems.” (Id. ¶ 15.)
In discussing the prior art, Savage discloses that
[o]ne problem with fluorescent blue light therapy is that it may
provide additional light in a broader bandwidth than necessary.
In addition, fluorescent light banks or boxes emit a substantial
amount of heat causing substantial discomfort and possibly even
danger to newborn infants. Light banks or boxes are not
portable, requiring the baby to remain in one location. The
mother or other attendants are not able to care for it during
fluorescent photo therapy. In addition, the light is directed to the
entire body, including the eyes, requiring eye shields or shades
to be used. Consequently, light banks or boxes are not as
conducive to use by outpatients at home.
(Id. ¶ 8.)
Unlike such prior art fluorescent blue light therapy devices, the
Savage device uses LEDs to “make[] the device light-weight, inexpensive,
low in heat output and able to deliver different wavelengths of light as
needed.” (Id. ¶ 15.) Although Savage discloses implementations of the
Savage invention that deliver light through non-ocular areas of the skin (see,
e.g., id. ¶ 17), Savage’s discussion of the use of eye shields or shades
pertains to the use of prior art devices, and particularly the use of prior art
devices with infants and babies. (See id. ¶ 8.) Appellant points to no such
cautionary teaching with regard to use of the Savage invention itself.
Therefore, we do not find persuasive Appellant’s argument that “Savage
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teaches avoidance of directing light into a subject’s eyes” when using the
Savage invention. (See Appeal Br. 6 (citing Savage ¶ 8).)
With regard to the Searfoss ’598 reference, the Examiner finds that
Searfoss ’332 does not specifically teach a half bandwidth of 10 nm or less,
as recited in claim 16. However, the Examiner finds that Searfoss ’598
teaches that
light treatment through the eyes can influence sleep cycle and
regulate melatonin (Col. 1, ll. 38-52), and a narrow waveband of
10-20 nm of light provides [a] “pure” energy pattern for
phototherapy (Col. 4, ll. 52-60; Note: melatonin is a well-known
hormone to induce sleep; waveband of 10-20 nm reflects a half
bandwidth of 5-10 nm).
(Final Action 8.) The Examiner determines that “it would have been
obvious to one of ordinary skill in the art . . . to modify [the] Searfoss ’332
invention by incorporating light with half bandwidth of 10 nm or less, as
taught by Searfoss ’598, because doing so facilitates phototherapy by
providing a pure light energy with narrow bandwidth.” (Final Action 8
(emphasis omitted).)
Searfoss ’598 teaches that “both ocular as well as non-ocular
techniques have been employed in an attempt to achieve various
[psychological and physiological] effects, [although] ocular treatment
appears to be most efficacious.” (Searfoss ’598, col. 1, ll. 15–20.) Searfoss
’598 teaches “[a] phototherapy method wherein sequences of various
substantially isolated electromagnetic energy patterns are directed into an
observer’s eyes in order to determine to which such pattern the observer is
most responsive in terms of being induced towards a state of homeostasis.”
(Id., Abstract.)
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As noted above, Appellant argues that the combination of Searfoss
’598 with Savage “is improper because these references teach away from
each other where the claimed invention is concerned.” (Appeal Br. 6.) We
do not find this argument persuasive.
Searfoss ’598 suggests that directing light/electromagnetic energy to
ocular regions will likely be more efficacious than directing
light/electromagnetic energy to non-ocular regions. (Searfoss ’598, col. 1,
ll. 15–20.) But Appellant does not direct us to portions of Searfoss ’598
suggesting that the delivery of light/electromagnetic energy to ocular as well
as non-ocular regions of the body would be unlikely to produce desirable
psychological and physiological effects, including sleep related effects, i.e.,
the objective of Appellant’s invention. (See Searfoss ’598, col. 1, ll. 38–52,
col. 2, ll. 31–34.) At best, Searfoss ’598 teaches that directing light to non-
ocular areas will likely be less efficacious than directing light to ocular
areas, i.e., it is not a preferred embodiment. Therefore, we do not find
Appellant’s argument persuasive. See, e.g., Syntex (U.S.A.) LLC, 407 F.3d
at 1380.
With regard to Kondo,2 the Examiner finds that it teaches
illuminance at an eye position in the face being 20-120 lux (e.g.
Para. 0058 “The sleep illuminance is about 30 lux. This is
because if the illuminance is greater than 30 lux, it is difficult for
the sleeper to feel dazzled [sic] and fall asleep. Also, if the
illuminance is a value smaller than 30 lux, the sleeper feels
uncomfortable as if it was dark enough to be unable to act
rapidly. However, the sleep illuminance is not strictly 30 lux,

2 Kondo teaches “[a] sleep environment adjustment method by controlling
light, sound, and temperature to form a comfortable sleep environment, and
a sleep environment adjustment system that realizes the sleep environment
adjustment method.” (Kondo, Abstract.)
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and an illuminance of 20 to 40 lux can be set. The sleep
preparation illuminance is about 100 lux. This is because the
illuminance of 100 lux is suitable for taking a sleeper’s mind and
body into sleep preparation”).
(Final Action 9.) The Examiner determines that
[i]t is also commonly known that bright light may disturb sleep.
Therefore, an ordinary artisan would have found it obvious to
choose an illuminance or a range of illuminance towards the
lower end of the illuminance of Searfoss ’332, i.e., 20-40 lux, or
up to 100 lux, to help a user for sleeping.
(Id. (emphasis omitted).)
Appellant argues that it is improper to “combine Kondo with Savage
. . . because these references also teach away from each other where the
delivery of light to eyes is concerned.” (Appeal Br. 6.) Specifically,
Appellant argues that “Savage teaches avoidance of directing light into a
subject’s eyes, but according to the Final Action at page 9, ‘Kondo teaches
illuminance at an eye position in the face’ per Applicant’s claim 16.” (Id.)
As discussed above, Savage’s discussion of the use of eye shields or
shades pertains to the use of prior art devices. Appellant points to no such
discussion with regard to use of the Savage invention itself. Therefore, we
do not find persuasive Appellant’s argument that Savage teaches away from
Kondo.

Hindsight/Optimization
Appellant argues that “[t]he current rejections combine particular
teachings from five different references, while ignoring other teachings in
those references. This is contrary to the law governing obviousness . . . .”
(Appeal Br. 7; see also id. at 8–9.)
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The Examiner explains that
[t]he examiner merely used the structure of the claim to show the
elements from the disclosure considered to be the main prior art.
. . . Furthermore, a closer look at the examiner’s office action
would provide clarity that the main reference reads over the
applicant’s claimed invention and provides an express goal.
Secondary references were only used to establish the optimized
values to achieve the same goal. It is important to note that these
optimizations were not at random. As such, specific
motivational statement in each secondary reference that is
consistent with the goal was set forth, and a rational [sic] through
all the references were [sic] provided as clearly as possible.
(Final Action 2–3.)
Appellant argues that “reliance on optimization is misplaced in this
case. Sleep induction is not a predictable art. This is apparent from the
mutually inconsistent values offered in the references.” (Appeal Br. 9
(emphasis omitted).) Appellant provides a list of five asserted examples of
such inconsistent values. We do not find the argument persuasive.
First, Appellant asserts that “[f]or light at 475nm, Searfoss ’332
recommends two mutually inconsistent lumen ranges: 20-200 lumens and
1000-1800 lumens.” (Id.) Appellant “withdr[ew] the argument” in light of
the Examiner’s response that these “inconsistent lumen ranges” reflect
different modes of operation, i.e., sleep readiness mode and wake-up mode.
(Reply Br. 5; see also Answer 7.)
Second, Appellant asserts that “Searfoss ’598 recommends both
‘wavelengths not consciously perceived’ and the ‘visible spectrum’ which -
being visible - would be consciously perceived.” (Appeal Br. 9.) We do not
find this argument persuasive. Searfoss ’598 teaches that “[t]he
electromagnetic energy range employed need not be limited to the visible
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spectrum, but can extend into wavelengths not consciously perceived by the
individual.” (Searfoss ’598, col. 3, ll. 65–68; see also Answer 7–8.)
Third, Appellant asserts that “[f]or light at 470nm (which is in the
450-540nm range), Searfoss ’332 recommends an exposure duration of only
five or ten minutes, but Savage recommends that exposure be ‘as long as
possible every day for 4-5 days’.” (Appeal Br. 9.) We do not find this
argument persuasive. Savage discloses “examples of specific light
wavelengths that have been found to be effective in the industry in treating
various problems include . . . 465-470 nm, particularly 467 nm for treating
sleep disorders and circadian cycle problems.” (Savage ¶ 48.) It is in this
regard that the Examiner has cited Savage. (See Final Action 8; see also
Answer 8.) The discussion in Savage cited by Appellant regarding exposure
for “as long as possible” is not related to treating sleep disorders. Rather,
that discussion relates to “a newborn infant that was jaundiced with an
excess of bilirubin. Light having a wavelength of 470 nm was emitted from
LEDs at an angle of 30°. The light was applied to the infant as long as
possible every day for 4-5 days.” (Id. ¶ 61.)
Fourth, Appellant asserts that “Heller recommends light directed at
the eyes for 1-25 msecs but Searfoss [’]598 recommends light directed at the
eyes for 3-8 minutes.” (Appeal Br. 9.) We do not find this argument
persuasive. Heller discloses “a method and device for resetting a subject’s
circadian pacemaker or for treating other sleep or seasonal affective
disorders.” (Heller, col. 1, ll. 12–14.) Heller discloses that
[t]he method includes exposing the subject’s eye region to a
given-intensity light flash having a flash duration of between
about 1–500 msec, at a periodicity of between about one flash
per 5 to 60 secs, i.e., 1 to 20 times per minute, over a selected
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time period effective, were the subject exposed to a continuous
light pulse of the same intensity for this period, to phase shift the
circadian pacemaker or treat the seasonal affective disorder in the
subject.
(Id. at col. 2, ll. 14–22.) Heller discloses that “[t]he flash duration is
preferably between about 1–25 msec” (id. at col. 2, l. 23), and that “[t]he
period of exposure is typically between about 5–180 minutes” (id. at col. 2,
ll. 25–26). We agree with the Examiner that “Appellant’s argument is based
on text [in Heller] which is read out of context and is not persuasive.
Appellant’s citations appear[] to be regarding ‘flash duration’ and not the
‘treatment duration.’” (See Answer 8.)
Fifth, Appellant argues that “Heller offers a smorgasbord of different
mutually inconsistent durations, including ‘120-600 msec’, ‘30-60 secs’,
‘15-30 minutes’, ‘60 minute period’, ‘1.5 hours’, ‘2-3 hours’, and ‘2-3
successive days’.” (Appeal Br. 9.) We agree with the Examiner that
“[A]ppellant does not provide any citations regarding where this appears to
be disclosed [in Heller]. The examiner presumes that the Appellant is
reading the ‘durations’ out of context. It appears that the Appellant is
mistakenly combining citations regarding ‘flash duration’ and the ‘treatment
duration’.” (Answer 9.) Regardless, we note that Heller discloses that
“[s]tudies conducted in support of [Heller’s] invention have shown
significant reset of circadian clock in mammals maintained in a dark
environment . . . with flash treatment for as little as five minutes . . . .
Typically, the treatment time will be at least 15 minutes . . . .” (Heller,
col. 7, ll. 22–31.) Heller further discloses that “treatment times for circadian
reset for a new time zone will typically be a graduated reset over a 2–4 day
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period.” (Id. at col. 8, ll. 7–9.) In view of the foregoing, we do not find
Appellant’s argument persuasive.
Appellant argues that “some of the recommendations made in the
references are vague or broad.” (Appeal Br. 9–10 (emphasis omitted).) We
agree with the Examiner that the associated examples provided by Appellant
are “without . . . any detailed citations” or context. (See Answer 9.)
Nonetheless, we have considered these examples and do not find them
persuasive.

Claims 16, 21, 43–50
Appellant argues independent claims 16 and 21, and dependent
claims 43–50 together. We select claim 16 as representative. Claims 21
and 43–50 will stand or fall with claim 16. See 37 C.F.R. § 41.37(c)(1)(iv).
Relying on arguments discussed above, Appellant further argues that
the prior art references “teach more than a million combinations of technical
characteristics and characteristic values, and the only way to choose the
particular claimed combinations from the cited references in this
unpredictable art is to improperly use the claims as a roadmap.” (Appeal
Br. 17.) However, as discussed above, we do not find persuasive
Appellant’s argument that the claimed invention is in an unpredictable art.
With regard to Appellant’s argument that the prior art references teach
more than a million combinations of characteristics, and that the Examiner
does not explain why one of skill in the art would have made particular
selections, e.g., one wavelength over another, we begin by recognizing that
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the Examiner has presented a prima facie case of obviousness.3 And, as
noted above, the Examiner has provided explanations as to why one of skill
in the art would have been motivated to make the particular selections. (See
supra.)
As [the Federal Circuit] has explained, “[o]ne way for a patent
applicant to rebut a prima facie case of obviousness is to make a
showing of ‘unexpected results,’ i.e., to show that the claimed
invention exhibits some superior property or advantage that a
person of ordinary skill in the relevant art would have found
surprising or unexpected.” In re Soni, 54 F.3d 746, 750 . . .
(Fed.Cir.1995). When an applicant seeks to overcome a prima
facie case of obviousness by showing improved performance in
a range that is within or overlaps with a range disclosed in the
prior art, the applicant must “show that the [claimed] range is
critical, generally by showing that the claimed range achieves
unexpected results relative to the prior art range.” In re
Woodruff, 919 F.2d 1575, 1578 . . . (Fed.Cir.1990).
In re Geisler, 116 F.3d 1465, 1469–70 (Fed. Cir. 1997) (brackets in
original). Moreover, “it is well settled that unexpected results must be
established by factual evidence. ‘Mere argument or conclusory statements
in the specification does not suffice.’” Id. at 1470 (quoting In re De Blauwe,
736 F.2d 699, 705 (Fed. Cir. 1994)). Appellant, however, presents no
persuasive evidence of such unexpected results or of the criticality of the

3 The USPTO carries its procedural burden of establishing a prima facie case
when its rejection satisfies the requirements of 35 U.S.C. § 132 by notifying
the applicant of the reasons for rejection, “together with such information
and references as may be useful in judging of the propriety of continuing the
prosecution of [the] application.” In re Jung, 637 F.3d 1356, 1362 (Fed.
Cir. 2011) (brackets in original) (quoting 35 U.S.C. § 132(a)). Particularly
in view of Appellant’s responses to the Examiner’s stated reasons for the
rejection, we determine that the Examiner sufficiently notified Appellant of
the reasons for the rejection.
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claimed ranges. (See Answer 9.) Therefore, we do not find Appellant’s
argument persuasive.
Nor do we find persuasive Appellant’s arguments that refer to values
out of context. For example, Appellant argues that Savage recites 660 nm
and 405–420 nm wavelengths, and that “[t]he rejections do not say why one
of skill would have been motivated this way” as opposed to the 465–470 nm
range relied on by the Examiner. (Appeal Br. 17–18.) We agree with the
Examiner that
[t]he citation that the Appellant appears to be arguing is in
paragraph 0048 which recites “... 660 nm for treating wounds,
cuts, scars and infections; 405-420 nm for treating acne; 465-470
nm, particularly 467 nm for treating sleep disorders and circadian
cycle problems”. Therefore, peak wavelength 660nm would not
be used when the treatment is pertinent to sleep disorder, as is
the case here.
(Answer 13.)4
Appellant argues that the rejection does not say why “one of skill
[would] modify the Searfoss ’332 invention to use the bandwidth from a
different reference when Searfoss ’332 already teaches a narrow bandwidth
of 30nm.” (Appeal Br. 18 (emphasis omitted).) Appellant does not
persuasively argue why the Examiner’s explanation, that “the examiner has
discussed the clear[] . . . desire or trend for ‘pure’ energy, i.e. an exact
wavelength with a bandwidth of 0,” does not sufficiently explain why one of
skill in the art would have been motivated to make the proposed

4 In the Reply Brief, Appellant “withdraws the citation to a teaching of 660
nm in Savage.” (Reply Br. 9.) But Appellant did not indicate withdrawal of
the argument regarding the 405–420 nm citation. (See id.)
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modification and use the narrower bandwidth taught by Searfoss ’598. (See
Answer 13.)
Appellant argues that “the Final Action attempts to justify the addition
of Kondo as a reference by asserting that it is ‘commonly known that bright
light may disturb sleep.’ While this may be common knowledge, it is not a
reason to add Kondo to the mix.” (Appeal Br. 18.)
Kondo is cited for teaching “illuminance at an eye position in the face
being 20-120 lux.” (Final Action 9.) In particular, the Examiner finds that
Kondo teaches
“. . . the sleep illuminance is not strictly 30 lux, and an
illuminance of 20 to 40 lux can be set. The sleep preparation
illuminance is about 100 lux. This is because the illuminance of
100 lux is suitable for taking a sleeper’s mind and body into sleep
preparation”[]. It is also commonly known that bright light may
disturb sleep. Therefore, an ordinary artisan would have found
it obvious to choose an illuminance or a range of illuminance
towards the lower end of the illuminance range of Searfoss ’332,
i.e., 20-40 lux, or up to 100 lux, to help a user for sleeping.
(Id. (quoting Kondo ¶ 58) (emphasis omitted).) Appellant does not
persuasively argue why, in view of Kondo’s teaching of a range of
illuminance helpful for sleeping, the Examiner erred in determining that one
of ordinary skill in the art would have found it obvious to select an
illuminance range in accord with Kondo, i.e., toward the lower end of the
range disclosed in Searfoss ’332. (See, e.g., Searfoss ’332 ¶¶ 35, 40
(disclosing sleep readiness mode illuminance between 20–200 lumens with a
more preferred level of about 40 lumens, and a sleep help mode illuminance
between 5–50 lumens).)
We are not persuaded that the Examiner erred in rejecting claim 16.
Claims 21 and 43–50 fall with claim 1.
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Claims 40, 41, 44, 45, 49, and 50
Claim 49 recites: “The method of claim 16, wherein said ultra-narrow
band light has a half bandwidth of 3 nm or less.” Claims 40, 41, 44, 45,
and 50 contain similar language.
The Examiner finds that “Searfoss ’598 teaches a narrow waveband of
light having a half bandwidth of 5-10 nm provides ‘pure’ energy pattern for
phototherapy (Col. 4, ll. 52-60).” (Final Action 12; see also id. at 13.)
Therefore, the Examiner determines, “it would have been obvious to one of
ordinary skill in the art . . . to modify Searfoss ’332 invention by further
incorporating a narrower bandwidth of light, e.g., half bandwidth of 3 nm or
less, to provide pure energy for phototherapy for sleep treatment, as taught
by Searfoss ’598.” (Final Action 12 (emphasis omitted).)
Appellant argues:
Even if there was a desire or trend for “pure” energy as the Final
Action asserts, that desire or trend was evidently satisfied by a
half bandwidth of 5nm, since that is the tightest half bandwidth
actually stated in the references. Applicant’s claim therefore
goes beyond what is evidently needed (per the references) to
conform with the asserted desire or trend for “pure” energy.
(Appeal Br. 19; see also Answer 14.)
Searfoss ’598 discloses:
In order to therefore provide as “pure” an energy pattern
as possible, both in an effort to identify an effective pattern and
then to maximize the efficacy of such pattern to achieve
therapeutic results, the use of substantially monochromatic or
relatively narrow wavebands is required. Narrow band pass
filters are currently available that facilitate the selection of a
variety of such narrow wavebands (10-20 nm) throughout the
electromagnetic spectrum from a single radiation source.
(Searfoss ’598, col. 4, ll. 52–60.)
Appeal 2021-002043
Application 13/499,694

18
The Examiner does not sufficiently explain why the teaching in
Searfoss ’598 of 10–20 nm bandwidths (Searfoss ’598, col. 4, ll. 52–60),
which the Examiner finds reflects a half bandwidth of 5–10 nm (Final
Action 8), would have made obvious at the time of Appellant’s invention use
of a half bandwidth of 3 nm or less, as recited in claim 49. Although we
agree with the Examiner that Searfoss ’598 discloses use of “substantially
monochromatic or relatively narrow wavebands” (Searfoss ’598, col. 4,
ll. 52–60; see also Final Action 12, 13), the Examiner does not sufficiently
explain why one of skill in the art would have modified Searfoss ’332 to use
a narrower half bandwidth than the narrowest half bandwidth disclosed in
the relied-upon art, i.e., Searfoss ’598. See ModernaTx, Inc. v. Therapeutics,
Inc., No. 2020-2329, 2021 WL 5617752, at *6 (Fed. Cir. Dec. 1, 2021).
Therefore, we will reverse the rejection of claim 49, and of claims 40,
41, 44, 45, and 50, which include similar language.

Claims 51 and 52
Claim 51 recites: “The method of claim 38, further comprising
controlling an irradiation time in the light in blue to be from 5 to 30
minutes.” Claim 52 includes similar language but specifies the period “to be
from 5 to 15 minutes.”
The Examiner finds that “Searfoss ’332 teaches controlling an
irradiation time in the light in blue to be from 5 to 30 minutes, as in
claim 51, or from 5 to 15 minutes, as in claim 52 (par. 40).” (Final
Action 14.) Specifically, the Examiner finds that Searfoss ’332 teaches
controlling the irradiation time in the light to be 5 minutes, a value found in
both the 5–30 and 5–15 minute ranges. (Answer 14–15.)
Appeal 2021-002043
Application 13/499,694

19
Appellant argues that the 5 minute period disclosed in Searfoss ’332 is
open-ended and does not teach the claimed 30 and 15 minute maximums.
(Appeal Br. 20.)
It is well settled that a “claimed invention is rendered prima facie
obvious by the teachings of a prior art reference that discloses a range that
touches the range recited in the claim.” In re Geisler, 116 F.3d at 1469
(citing In re Malagari, 499 F.2d 1297, 1303 (CCPA 1974). Here, the
disclosure in Searfoss ’332 of a 5 minute period is within the ranges recited
in claims 51 and 52. Moreover, Appellant presents no persuasive evidence
of unexpected results or of the criticality of the claimed ranges. Therefore,
we do not find Appellant’s argument persuasive.

Claims 38–41, 51, and 52
Appellant argues that claims 38–41, 51, and 52 should be allowed for
the reasons discussed above with regard to claim 16. (Appeal Br. 20.)
Specifically, Appellant points to the arguments for claim 16 regarding “the
improper combination of Searfoss [’]598 with Savage, and rejection reliance
on improper hindsight in an unpredictable art.” (Id.)
For the reasons already discussed, we do not find these arguments
persuasive.

Summary
In view of the foregoing, we will affirm the rejections of independent
claims 16, 21, and 38, and dependent claims 39, 43, 46–48, 51, and 52. We
will reverse the rejections of dependent claims 40, 41, 44, 45, 49, and 50.
Appeal 2021-002043
Application 13/499,694

20
Appellant’s other arguments have been considered but are not
persuasive.

CONCLUSIONS
The Examiner’s rejections of claims 16, 21, 38, 39, 43, 46–48, 51, and
52 under 35 U.S.C. § 103(a) are affirmed.
The Examiner’s rejections of claims 40, 41, 44, 45, 49, and 50 under
35 U.S.C. § 103(a) are reversed.
Specifically:
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
16, 21,
43–50
103(a) Searfoss ’332,
Savage,
Searfoss ’598, Heller,
Kondo
16, 21, 43,
46–48
44, 45, 49,
50
38–41, 51,
52
103 Searfoss ’332,
Savage, Searfoss ’598
38, 39, 51,
52
40, 41
Overall
Outcome
16, 21, 38,
39, 43, 46–
48, 51, 52
40, 41, 44,
45, 49, 50

No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R.
§ 1.136(a)(1)(iv).

AFFIRMED-IN-PART