Ex Parte ARA et al

Patent Trial and Appeal Board

Jul 19, 2018

14171084 (P.T.A.B. Jul. 19, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/171,084 02/03/2014
23373 7590 07/23/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Hironori ARA
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
Q209842 3253
EXAMINER
ALKER, KATHLEEN 1W ASAKI
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
07/23/2018 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):
PPROCESSING@SUGHRUE.COM
sughrue@sughrue.com
USPTO@sughrue.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte HIRONORI ARA, HIROSHI SUZUKI, and
RYOUICHI TAKEUCHI
Appeal2017-008820
Application 14/171,084 1
Technology Center 3600
Before LINDA E. HORNER, ERIC C. JESCHKE, and
ANTHONY KNIGHT, Administrative Patent Judges.
KNIGHT, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants appeal under 35 U.S.C. § 134(a) from a Final Office
Action dated June 8, 2016 ("Final Act.") rejecting claims 1---6. 2 We have
jurisdiction under 35 U.S.C. § 6(b ).
We AFFIRM.
1 According to Appellants, SHOW A DENKO K.K., the Applicant, is the real
party in interest. Br. 2.
2 Claim 7 has been withdrawn by the Examiner as directed to a nonelected
invention. See Office action dated January 14, 2016.
Appeal2017-008820
Application 14/171,084
CLAIMED SUBJECT MATTER
The claims are directed to a plant cultivation method for promoting
growth of a plant using solar light and artificial light. Spec. 1: 7-9. Claims 1
and 2 are the sole independent claims. Claim 1, reproduced below, is
illustrative of the claimed subject matter:
1. A plant cultivation method comprising:
a step of irradiating a plant with sunlight;
a step of irradiating the plant with red light; and
a step of irradiating the plant with blue light,
wherein the steps are repeatedly performed independently within
a certain period of time, and an irradiation time of each step is
between 3 hours and 48 hours.
Br. 18 (Claims App'x.).
REJECTIONS
The Examiner made the following rejections:
I. Claims 1 and 2 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Loebl et al. (US 8,061,080 B2, issued Nov. 22, 2011)
("Loebl"), Takeuchi et al. (WO 2011/016521 Al, published Feb. 10, 2011)
("Takeuchi"), and Im et al. (US 2012/0171733 Al, published July 5, 2012)
("Im").
II. Claims 3-6 stand rejected under 35 U.S.C. § I03(a) as being
unpatentable over Loebl, Takeuchi, Im, and Haniyu et al. (JP 2006--067948,
published Mar. 16, 2006) ("Haniyu").
2
Appeal2017-008820
Application 14/171,084
OPINION
Rejection I-The rejection of claims 1 and 2 under
35 USC§ 103(a) over Loeb!, Takeuchi, and Im
The Examiner finds that Loebl teaches, inter alia, plant cultivation by
irradiating a plant with sunlight independently of irradiating a plant with red
light and blue light in a series of steps that are repeatedly performed, and the
irradiation time of the sunlight step is between 3 hours and 48 hours. Final
Act. 3 (citing Loebl 3:55-58; 4:2-5, 55-57; 6:36-37, 42--45; 7:42-55). The
Examiner finds that Takeuchi teaches irradiating a plant with red light and
blue light independently. Id. at 4 (citing Takeuchi ,r 112). The Examiner
relies upon Im to teach irradiating a plant with red and blue light in a series
of steps over a certain period of time, 9-16 hours. Id. ( citing Im ,r,r 131,
274, 328, 333). The Examiner recites that the motivation for combining
Loebl and Takeuchi is "to separately promote photomorphogenesis and
phototropism using the blue light or to promote seed germination and
pigment formation with the red light depending upon the needs of the plants
and as desired by the user." Id. The motivation provided by the Examiner
for further modifying Loebl, as modified by Takeuchi, with the teachings of
Im is "in order to have [a] predictable effect on plant growth, since it has
been held that where the general conditions of a claim are disclosed in the
prior art, discovering the optimum or workable ranges involves only routine
skill in the art." Id. at 4--5 (citing In re Aller, 220 F.2d 454 (CCPA 1955)).
Unexpected Results
Appellants first argue that the claimed invention provides
"unexpectedly superior results." Br. 7 (emphasis omitted). Appellants argue
that Loebl is comparable to their Comparative Examples 2 and 4 in the
3
Appeal2017-008820
Application 14/171,084
Specification. Id. ( describing Comparative Examples 2 and 4 as irradiating
with red and blue light at the same time). Appellants continue the argument
stating that "Loebl does not teach any specific irradiation method." Id.
Specifically, Appellants argue that "Loebl suggests that more light is better
whereas the Examples of the present specification demonstrate that the
opposite is true, which is therefore an unexpected result in view of Loe bl."
Id. at 8.
Below is a copy of Appellants' Table 1 showing examples of plants
grown based on the present method and plants grown for comparison.
FRESH WE[GHT RATIO OF POWER
ABOVE-GROUND PART((}'&} CONSUMPTION(kWh)
EXAMPLE 1 100 ~- 6
EXAfAPLE 2 95 @. 6
EXAMPLE '"' .. ~ 100 3. 3
EXAMPLE 4 110 3. 3
COMPARATIVE 45 0 EXAMPLE l
COMPARATIVE 68 l9 ? EXAMPLE <) .....,e_
COMPARATIVE i:::5 0 EXAMPLE 3 ,,J
GOMPARATIVE 73 ti. 6 EXAMPLE 4
COMPARATIVE 40 9.6 EX.AMPLE 5
COMPARATIVE 38 3. 3 EXAMPLE 6
Spec. 21.
4
Appeal2017-008820
Application 14/171,084
Above is Appellants' Table 1 illustrating four examples of plants
grown using the method disclosed in the present application and six
comparative examples using methods different from Appellants' method.
Appellants state that the environment for all of the examples and
comparative examples is the same, except for the light irradiation.
Spec. 18:3-11.
Appellants identify leaf lettuce as the plant grown in Examples 1 and
2 and Comparative Examples 1, 2, and 5. Welch onions are indicated by
Appellants as the plant grown in Examples 3 and 4 and Comparative
Examples 3, 4, and 6. In Examples 1--4 and Comparative Examples 1--4,
each plant was exposed to 14 hours of sunlight per day and in Comparative
Examples 5 and 6, the plants were given no sunlight. For Examples 1--4 and
Comparative Examples 5 and 6, at night, each plant was given 5 hours of
light from red LEDs and 5 hours of light from blue LEDs with the time
periods for the red and blue LEDs not overlapping. In Comparative
Examples 1 and 3, the plant was not irradiated with artificial light. In
Comparative Examples 2 and 4, at night, each plant was given 10 hours of
light from red LEDs and 10 hours of light from blue LEDs simultaneously.
The light emission intensity in the leaf lettuce examples was 225
µmol photons m- 2 s-1 for the red LEDs and 75 µmol photons m-2 s-1 for the
blue LEDs, and the light emission intensity in the Welsh onion examples
was 120 µmol photons m- 2 s-1 for the red LEDs and 60 µmol photons m-2 s-1
for the blue LEDs. Spec. 18-20.
Appellants argue that Loe bl "teaches red and blue light irradiated at
the same time, corresponding to Comparative Examples 2 and 4 of the
present specification." Br. 7. Appellants then state that "Loebl does not
5
Appeal2017-008820
Application 14/171,084
teach any specific irradiation method." Id. The Examiner notes that
Appellants' statements with regards to Loebl are contradictory. See Ans. 2-
3 ("[I]t is unclear how Appellant has concluded that Loe bl' s disclosure
corresponds with specific comparative examples when Appellants' argument
is that Loebl does not teach a specific irradiation method."). We agree with
the Examiner. If Loebl does not discuss an irradiating method then,
logically, it does not necessarily correspond to the irradiating method of
Comparative Examples 2 and 4. Appellants offer no compelling explanation
as to how Comparative Examples 2 and 4 correspond with the teachings of
Loebl. See In re Finley, 174 F.2d 130 (CCP A 1949) (holding that where the
comparison is not identical with the reference disclosure and where
deviations therefrom are not explained, the evidence is entitled to little
weight).
Appellants argue that "Loebl suggests that more light is better." Br. 8.
Appellants seek to have us infer that Loebl must, therefore, irradiate with the
blue and red lights at the same time. This inference is not, however,
supported by Loebl. For instance, the Examiner notes that Loebl teaches
using a control light, such as a blue light, which results in a tall plant. Ans. 3
( citing Loe bl 4:9-22). As noted by the Examiner, Appellants do not address
Loe bl' s disclosure of the control light, or the reasons for having a control
light, when advancing the argument that Comparative Examples 2 and 4
correspond to Loebl. Id. The Examiner thus highlights a difference between
Loebl's method and Comparative Examples 2 and 4. Appellants do not
account for this difference between the Loebl and Comparative Examples 2
and 4. Thus, because the teachings of Loe bl differ from Comparative
6
Appeal2017-008820
Application 14/171,084
Examples 2 and 4 and an explanation for such differences is not provided,
Appellants' evidence of unexpected results is afforded little weight.
Appellants state that Example 1 corresponds to the method of the
present invention. See Br. 8 ("Comparative Examples 2 and 4 ... as
compared to ... Example 1. "). The Examiner points out that "[ t ]he claimed
range of 3 to 48 hours is so large compared with the five hours described in
Example 1. Therefore, it is unreasonable to argue that the five hours in
Example 1 is commensurate in scope with the claimed invention." Ans. 3--4.
Stated a little differently, Appellants must show that the unexpected result
occurs across the entire claimed range. See In re Harris, 409 F.3d 1339,
1344 (Fed. Cir. 2005) (affirming the Board's determination that proffered
evidence did not show that the results were unexpected because "[t]he Board
[] correctly reasoned that the showing of unexpected results is not
commensurate in scope with the degree of protection sought by the claimed
subject matter"). In this case, even assuming that the results achieved with
five hours of irradiation were unexpected, Appellants failed to show results
covering the scope of the claimed range. Alternatively, Appellants need to
narrow the claim. Accordingly, we are not persuaded that Appellants
demonstrate an unexpected result as to the claimed subject matter based on
Example 1 because the time period for irradiating the plants ( 5 hours for red
LEDs and 5 hours for blue LEDs) is not commensurate in scope with the
claimed range of 3--48 hours.
Appellants argue that "the presently claimed invention has the added
benefit of providing energy savings." Br. 10. As the Examiner points out,
"no energy would appear to be saved by running the red light and the blue
light each for 48 hours." Ans. 4. As stated above, Appellants have not
7
Appeal2017-008820
Application 14/171,084
compared the closest prior art to the claimed invention; therefore,
Appellants' argument lacks evidentiary support. As such, the conclusion
cannot be made that an unexpected result will occur because Appellants
have not compared the claimed subject matter to the closest prior art.
Appellants do not state in their Specification or in an evidentiary
document, such as an affidavit or declaration under 37 C.F.R. § 1.132, that
the results achieved were unexpected. Without evidentiary support,
Appellants do not show unexpected results. See In re Geisler, 116 F.3d
1465, 1471 (Fed. Cir. 1997) (court noting that Geisler made no assertion in
his application or through other evidentiary submissions that the improved
properties were greater than would have been predicted; "[i]nstead, the only
reference to unexpected results was a statement by Geisler's counsel, in
response to the examiner's first rejection, that Geisler's results were
'surprising.' And, as the Soni [54 F.3d 746, 750 (Fed. Cir. 1995)] court itself
noted, naked attorney argument is 'insufficient to establish unexpected
results."') (Citations omitted). Accordingly, Appellants' statements do not
persuade us of error with respect to the Examiner's decision concerning
unexpected results.
As discussed above, and for the reasons as stated, Appellants'
arguments with respect to unexpected results do not apprise us of error in the
Examiner's rejection.
Motivation for Combining Loebl and Im
Appellants argue that "the Examiner does not provide any motivation
for combining Loebl and Im other than 'in order to have [a] predictable
effect on plant growth."' Br. 10 (quoting the Examiner's Final Action)
(boldface deleted). Appellants argue that the Examiner has not made "a
8
Appeal2017-008820
Application 14/171,084
finding that one of ordinary skill in the art could have combined the
elements as claimed by known methods, and that in combination, each
element merely performs the same function as it does separately" and "a
finding that one of ordinary skill in the art would have recognized that the
results of the combination were predictable." Id. at 11. Appellants further
argue that the Examiner's reliance on Aller is misplaced because the
articulated reason for combining is deficient. Id.
Appellants' argument does not address the full statement of
motivation provided by the Examiner. The Examiner says:
It would have been obvious to one having ordinary skill in the art
at the time the invention was made to modify [] each of the steps
of irradiating red light and blue light of Loebl et al. as modified
by Takeuchi to have an irradiation time of between 3 hours and
48 hours as taught by Im et al. in order to have an [sic] predictable
effect on plant growth, since it has been held that where the
general conditions of a claim are disclosed in the prior art,
discovering the optimum or workable ranges involves only
routine skill in the art.
Final Act. 4--5. The Examiner further explained, in the Examiner's Answer:
Even the Loebl reference makes clear that blue light is effective
in producing a tall plant (col 4, ln 9-22), and Loebl teaches using
the red and blue lights only at nighttime (col 3, ln 55-58). Typical
hours of darkness, although varying with the season, are around
10 hours, which is well within the claimed range of 3 to 48 hours;
thus, Loe bl itself may teach the claimed range. However, Loe bl
does not call out a specific amount of time, hence the method
was modified with the range taught by Im. Along with Im's
teaching, one of ordinary skill in the art would know to change
the irradiation times to produce the desired effect, and according
to case law discovering optimum or workable ranges involves
9
Appeal2017-008820
Application 14/171,084
only routine skill in the art (In re Aller, 105 USPQ 233).
Therefore, a prima facie case of obviousness has been set forth.
Ans. 5-6.
As to Appellants' first point, as the Examiner recites in the motivation
statement, and further elaborates in the Answer, a person having ordinary
skill in the art at the time of Appellants' invention would have been led to
modify the prior art inventions to perform their known functions. Loebl and
Im both recite using red and blue lights to affect plant growth with the
modification to Loebl's method being that the time period would be
modified as taught by Im. Thus, the Examiner's rejection addressed
Appellants' first point because the Examiner recites a motivation statement
that includes all of the specified elements and also states that they would be
combined in a known way. As to Appellants' second point above, the
Examiner addresses this point by stating that the modification would be
made in order to have a predictable effect on plant growth. Thus, the
Examiner's motivation statement addresses Appellants' second point
because the Examiner recites a reason with rational underpinning for the
combination. Thus, for the reasons stated above, Appellants' arguments
regarding motivation do not apprise us of error.
Appellants also argue that "the differences between Loebl and Im
would have dissuaded a person of ordinary skill in the art from combining
the references." Br. 13. In particular, Appellants argue that Im is directed to
growing microalgae and Loebl is directed to a greenhouse. Id. at 13-14.
Appellants posit that one of ordinary skill in the art would not have been
motivated to apply the teachings of Im because "the irradiation times of Im
are specific to cultivating microalgae and are not applicable to the
controlling device ofLoebl." Id. at 14. Appellants base their argument on
10
Appeal2017-008820
Application 14/171,084
Loe bl, stating: "Loe bl suggests large quantities of light that would not be
suitable for microalgae and Loebl does not recognize the conditions specific
to cultivation of microalgae as discussed." Id.
Im' s teachings are broader than suggested by Appellants. Im states
that "[ m Jost of the photosynthetic organisms, including microalgae, use light
as an environmental signal to optimize themselves for growth and survival."
Im ,r 7. Thus, Im recognizes that photosynthesis is a process that most plants
employ to generate food for existence. Im discloses that light is necessary
for photosynthesis and can be provided by either natural sunlight or artificial
light. See id. ,r,r 13, 21, 131-138. Im also states that the radiance of the light
maybe provided over a wide range of intensities, e.g., 10-100 to 100-300
µmol photons m-2 s-1. See id. ,r 13 ("In some embodiments, the intensity of
the low irradiance of light is between 10-100 µmol photons m-2 s-1. In some
embodiments, the intensity of the low irradiance of light is between 100-300
µmol photons m-2 s-1 ."). Loebl teaches using natural light and artificial light
as light sources for plants but does not otherwise specify the light intensity.
Appellants disclose, in Appellants' Specification, the use of sun light and red
and blue LEDs with intensities similar to Im, see discussion of Table 1
above. It is not apparent that the light intensities levels of Loe bl would
dissuade a person of ordinary skill in the art from using the teachings of Im
with Loebl because Loebl and Im both disclose using natural light, Loebl
does not place restrictions on the light intensity, and the light intensities
disclosed in Im for microalgae are comparable to the light intensities
disclosed in Appellants' Specification as suitable for growing plants, such as
the plants being grown in Loebl. Im further states that "[t]he examples are
offered for illustrative purposes only, and are not intended to limit the scope
11
Appeal2017-008820
Application 14/171,084
of the present invention in any way." Id. ,r 271. Thus, Itn's teachings are
not so narrow as to be inapplicable.
Range
The range of 9--16 hours as disclosed in Im overlaps with Appellants'
3--48 hours. See In re Peterson, 315 F.3d 1325, 1329 (Fed. Cir 2003) ("In
cases involving overlapping ranges, we and our predecessor court have
consistently held that even a slight overlap in range establishes a prima facie
case of obviousness ... We have also held that a prima facie case of
obviousness exists when the claimed range and the prior art range do not
overlap but are close enough such that one skilled in the art would have
expected them to have the same properties."). Appellants do not apprise us
of error because Appellants' claimed range of 3--48 hours overlaps with Im's
teaching of 9--16 hours.
Rejection II-The rejection of claims 3-6 under
35 US. C. § 103 (a) over Loeb!, Takeuchi, Im, and Haniyu
Appellants argue that "Haniyu does not teach or suggest that an
irradiation time of each step is between 3 hours and 48 hours." Br. 16.
Appellants' argument is not persuasive because Im's teachings make the
claimed range obvious. See Ans. 7. Accordingly, Appellants do not apprise
us of error in the Examiner's rejection of claims 3---6.
DECISION
For the above reasons, the Examiner's rejections of claims 1---6 are
affirmed.
12
Appeal2017-008820
Application 14/171,084
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)(l )(iv).
AFFIRMED
13