Ex Parte Shigyo et al

Patent Trial and Appeal Board

Jul 10, 2018

14236192 (P.T.A.B. Jul. 10, 2018)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
14/236,192 01/30/2014
23373 7590 07/12/2018
SUGHRUE MION, PLLC
2100 PENNSYLVANIA A VENUE, N.W.
SUITE 800
WASHINGTON, DC 20037
FIRST NAMED INVENTOR
Masayoshi Shigyo
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.
Q209100 3912
EXAMINER
TOPOLSKI, MAGDALENA
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
07/12/2018 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 MASA YOSHI SHIGYO, HIROSHI SUZUKI,
NAO KI YAMAUCHI, AKIHIRO SHIMO KAW A,
MISATO MATSUMOTO, and YUKI TONOOKA
Appeal2017-008806
Application 14/23 6, 192
Technology Center 3600
Before WILLIAM A. CAPP, LEE L. STEPINA, and
RICHARD H. MARSCHALL, Administrative Patent Judges.
Opinion for the Board filed by CAPP, Administrative Patent Judge.
Opinion concurring filed by STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellants 1 seek our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, and 5-13. We have jurisdiction under 35 U.S.C.
§ 6(b).
We AFFIRM.
1 Appellants identify Showa Denko K.K. and Yamaguchi University as the
real parties in interest. Appeal Br. 2.
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THE INVENTION
Appellants' invention relates to plant cultivation. Spec. ,r 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A plant cultivation method, comprising conducting a
step for irradiating a red illuminative light to a plant and a step
for irradiating a blue illuminative light to the plant separately
and independently of each other within a certain time period,
wherein the irradiation time of each of the step for irradiating
the red illuminative light and the step for irradiating the blue
illuminative light is 3 hours or more and 24 hours or less.
THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
Okamoto JP 08-103167 Apr. 23, 1996
Karpinski US 2007/0151149 Al July 5, 2007
Karpinski-2 RU 2332006 Cl Aug. 27, 2008
Oldenhof, H. et al, Blue and Red Light Regulation of the Cell
Cycle in Chlamydomonas Reinhartdtii (Chlorophyta),
EUROPEAN JOURNAL OF PHYCOLOGY, 41(3), 313-320, 2006.
(hereinafter "O ldenhof').
The following rejections are before us for review:
1. Claims 1, 2, and 5-12 are rejected under 35 U.S.C. § I03(a) as
being unpatentable over Okamoto and Karpinski.
2. Claim 13 is rejected under 35 U.S.C. § I03(a) as being
unpatentable over Okamoto, Karpinski, and Karpinski-2.
3. Claims 1, 2, and 7-11 are rejected under 35 U.S.C. § I02(b) as
being anticipated by Oldenhof.
4. Claim 5 is rejected under 35 U.S.C. § I03(a) as being unpatentable
over Oldenhof and Karpinski.
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5. Claims 6 and 12 are rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oldenhof and Okamoto.
6. Claims 13 is rejected under 35 U.S.C. § 103(a) as being
unpatentable over Oldenhof and Karpinski-2. 2
OPINION
Unpatentability of Claims 1, 2, and 5-12
over Okamoto and Karpinski
Appellants argue claims 1, 2, and 5-12 as a group. Appeal Br. 6-16.
We select claim 1 as representative. See 37 C.F.R. § 4I.37(c)(l)(iv).
The Examiner finds, and Appellants do not dispute, that Okamoto
discloses a plant cultivation method that entails separately irradiating a plant
with blue and red light. Final Action 3. The Examiner relies on Karpinski
as disclosing the respective time limits of the claim. Id. The Examiner
concludes that it would have been obvious to a person of ordinary skill in the
art at the time of the invention to modify Okamoto to use respective time
limits of more than 3 and less than 24 hours as taught by Karpinski. Id.
According to the Examiner, a person of ordinary skill in the art would have
done this to alter the photochemicals in plant cells to achieve optimum
growth. Id.
Appellants challenge the Examiner's proposed combination of
references. Appeal Br. 6-13. Appellants characterize the respective
teachings of the applied art as "inapposite." Id. at 9. Appellants argue that
Okamoto irradiates live plants to stimulate growth. Id. at 10. Appellants
2 Grounds of rejection 3---6 were introduced by the Examiner in the Answer.
Ans. 2-9. After proper notice (Ans. 14), Appellants elected to maintain the
appeal by filing their Reply Brief. See Reply Br. 4--8.
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contrast Karpinski as irradiating plants after they have been harvested. Id.
According to Appellants, a person of ordinary skill in the art would not have
looked to a reference dealing with post-harvest plant irradiation in order to
modify a reference dealing with live plants. Id. In particular, Appellants
focus on the purpose of Karpinski, which is to restore the level of
phytochemicals in plant materials after the plant has been harvested. Id.
at 12. Appellants emphasize that Karpinski "does not relate to irradiating
living plants." Id. at 13. Appellants argue that the Examiner has not
supported the rejection with sufficient reasoning as to why a person of
ordinary skill in the art would have made the combination. Id. at 14 ("the
examiner ... failed to identify any support for the conclusion that
Karpinski' s irradiation times would be applicable for stimulating growth of
living plants").
In response, the Examiner reminds us that Okamoto teaches growth
and care of pre-harvest plants and that Karpinski is merely relied on to teach
the exposure time limitations. Ans. 11. The Examiner takes the position
that the claim is not limited to "live" plants and, therefore, Appellants'
arguments are not commensurate with the scope of the claims. Id. at 10.
The Examiner construes "plant cultivation" as broad enough to encompass
post-harvesting activities. Id. Therefore, according to the Examiner, it
would have been obvious to one having ordinary skill in the art to combine
pre and post-harvest processes since both refer to plant cultivation in
general. Id. The Examiner further explains that plants may continue to
"grow" after being "harvested" and cites as examples, a potato that can grow
eyes after being harvested, an onion that develops greens at the tips post-
harvest, and a green banana that ripens into a yellow banana. Id. at 12-14.
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Specifically in response to Appellants argument that the stated reasons
for making the combination are inadequate, the Examiner states that a
person of ordinary skill in the art would desire to achieve optimum growth,
particularly in reference to phytochemicals of plants that are still ripening,
developing, and growing. Id. at 13.
In reply, Appellants refer to the Examiner's comments as to the scope
of the claims encompassing post-harvest plants as "erroneous." Reply Br. 8.
At the outset, we note that Appellants' arguments regarding pre- and
post-harvested plants are based on use of the word "cultivation" in claim 1.
In other words, Appellants distinguish Karpinski because, according to
Appellants, "cultivation" ends when a plant is harvested. However, the term
"cultivation" appears only in the claim preamble. Whether to treat a
preamble as a claim limitation is determined on the facts of each case in
light of the claim as a whole and the invention described in the patent. See
Catalina Mktg. Int'!, Inc. v. Coolsavings.com, Inc., 289 F.3d 801, 808, 62
USPQ2d 1781, 1784 (Fed. Cir. 2002). There is no litmus test to determine
when a preamble limits claim scope. Corning Glass Works v. Sumitomo
Electric U.S.A., Inc., 868 F.2d 1251, 1257 (Fed. Cir. 1989). Generally, a
preamble is limiting when it is necessary to "give life, meaning, and vitality"
to the claim. See Pitney Bowes, Inc. v. Hewlett-Packard Co., 182 F.3d
1298, 1306 (Fed. Cir. 1999). Generally, a preamble is not limiting where an
applicant defines a structurally complete invention in the claim body and
uses the preamble only to state a purpose or intended use for the invention.
See Rowe v. Dror, 112 F.3d 473, 478 (Fed. Cir. 1997). The principles
regarding whether a preamble is limiting apply to method claims as well as
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apparatus claims. See e.g., Ericsson, Inc. v. D-Link Systems, Inc., 773 F.3d
1201, 1238-39 (Fed. Cir. 2014).
Appellants' Specification provides that:
The plant cultivation method according to the present invention
can be started or ended at any time during the entire period of
the plant cultivationfrom the time immediately after the seed
germination or immediately after planting the seedling through
cropping, and can be applied over any time period.
Spec. ,r 18 ( emphasis added). Appellants' Specification, read as a whole, is
directed to irradiating plants during the cultivation period defined in
paragraph 18. The Specification therefore supports finding that the
preamble limiting. In addition, both Appellants and the Examiner treat the
preamble as limiting. Under these circumstances, we will treat "plant
cultivation" as a claim limitation.
In their respective arguments, Appellants and the Examiner take
differing positions on the meaning and scope of "cultivation." Appellants
take a narrower view consistent with paragraph 18 of the Specification. The
Examiner takes a broader view, namely, that "cultivation" can continue post-
harvest Ans. 12-14.
During examination of a patent application, pending claims are given
their broadest reasonable construction consistent with the specification. In
re Am. Acad. of Sci. Tech Ctr., 367 F.3d 1359, 1364 (Fed. Cir. 2004). Under
the broadest reasonable interpretation standard, claim terms are given their
ordinary and customary meaning as would be understood by one of ordinary
skill in the art in the context of the entire disclosure. In re Trans logic Tech.,
Inc., 504 F.3d 1249, 1257 (Fed. Cir. 2007). "Therefore, we look to the
specification to see if it provides a definition for claim terms." In re ICON
Health and Fitness, Inc., 496 F.3d 1374, 1379 (Fed. Cir. 2007). When a
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patent applicant has elected to be a lexicographer by providing an explicit
definition in the specification for a claim term, such definition controls.
Renishaw PLC v. Marposs Societa 'Per Azioni, 158 F.3d 1243, 1249 (Fed.
Cir. 1998).
In the instant case, Appellants have provided a clear and unambiguous
definition of cultivation. Spec. ,r 18. Thus, consistent with Appellants'
definition, the period of "plant cultivation" begins any time after seed
germination or planting a seedling through "cropping," which we understand
to mean through "harvesting." Therefore, we reject the Examiner's broader
construction that encompasses post-harvest periods of time.
The foregoing discussion does not end our inquiry, however, as the
question remains whether a person of ordinary skill in the art would apply
Karpinski's post-harvest light irradiation timing protocol to Okamoto's pre-
harvest light irradiation method. Appellants do not dispute that, together,
Okamoto and Karpinski teach or suggest all of the limitations of claim 1.
The issue before us, then, is whether a person of ordinary skill in the art
would have considered it obvious to combine the references and would have
done so with a reasonable expectation of success. Appellants contend that
the Examiner has not provided "any rationale" as to why growing plants
would benefit from using Karpinski' s timing protocol in Okamoto's method.
Reply Br. 9.
In the instant case, the Examiner finds that a person of ordinary skill
in the art would have considered it obvious to adopt Karpinski's timing
protocol to Okamoto's method: "in order to alter the photochemicals in
plant cells to achieve optimum growth of a desired plant species depending
on the light exposure time." Final Action 3.
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[A]s indicated above plants continue to grow when harvested.
As per the motivation one would desire "to achieve optimum
growth" particularly in reference to phytochemicals of plants
that are still ripening or developing and growing. Cultivation
such plants to an optimum ripeness. For instance consider a
banana that is harvested green, this banana will ripen and grow
into a yellow banana, the banana does not rot immediately.
One would want to preserve the phytochemicals during this
growing/developing/living process of the banana.
Ans. 13-14 ( emphasis added). This constitutes articulated reasoning
supported by a rational underpinning that is sufficient to support the
rejection. See In re Kahn, 441 F.3d 977, 988 (Fed. Cir. 2006) (requiring an
obviousness conclusion to be based on explicit articulated reasoning with
rational underpinning), cited with approval inKSR, 550 U.S. at 418 (2007).
We are not persuaded by Appellants' argument that a person of
ordinary skill in the art would not look to Karpinski' s teaching because its
purpose is to preserve post-harvested plants. Appellants' legal arguments
are based on case authorities that pre-date 2007. See Appeal Br. 10, citing
In re Sang Su Lee, 277 F.3d 1338, 1343 (Fed. Cir. 2002) and further relying
on case authorities cited therein. However, the law of obviousness
underwent a sea change with the Supreme Court's landmark decision in KSR
Int'! Co. v. Teleflex Inc., 550 U.S. 398 (2007). KSR moved the law away
from a formalistic and rigid approach to finding a motivation to combine
references and toward a more flexible approach to the obviousness analysis.
Id. at 415 ("expansive and flexible approach").
The diversity of inventive pursuits and of modem technology
counsels against confining the obviousness analysis by ...
overemphasizing the importance of published articles and the
explicit content of issued patents.
Id. at 402.
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As the law has developed since KSR, a reason to modify a prior art
reference may be found explicitly or implicitly in market forces; design
incentives; the "interrelated teachings of multiple patents;" "any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent;" and the background knowledge, creativity, and
common sense of the person of ordinary skill. Perfect Web Techs., Inc. v.
Info USA, Inc., 587 F.3d 1324, 1328-29 (Fed. Cir. 2009) (quoting KSR Int'!
Co. v. Teleflex Inc., 550 U.S. 398, 418-21 (2007)). "[T]he 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, at 418.
Under KSR, it is common sense that familiar items may have obvious
uses beyond their primary purposes, and a person of ordinary skill often will
be able to fit the teachings of multiple patents together like pieces of a
puzzle. Id. at 420. Thus, it is not necessary for the prior art to serve the
same purpose as that disclosed in Appellants' Specification in order to
support the conclusion that the claimed subject matter would have been
obvious. See In re Lintner, 458 F.2d 1013, 1016 (CCPA 1972).
Consequently, "[a] reference may be read for all that it teaches, including
uses beyond its primary purpose." In re Mouttet, 686 F.3d 1322, 1331 (Fed.
Cir. 2012), citing KSR, 550 U.S. at 418--421. In view of the foregoing legal
authorities, we find unpersuasive Appellants' argument that a person of
ordinary skill in the art would necessarily limit the teachings of Karpinski to
its stated purpose of irradiating plants post-harvest.
The obviousness inquiry requires a determination that a skilled artisan
would have been motivated to combine the teachings of the prior art
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references to achieve the claimed invention, and that the skilled artisan
would have had a reasonable expectation of success in doing so. Kinetic
Concepts, Inc. v. Smith & Nephew, Inc., 688 F.3d 1342, 1360 (Fed. Cir.
2012). The presence or absence of a motivation to combine references in an
obviousness determination is a question of fact. See Par Pharm., Inc. v. TWI
Pharm., Inc., 773 F.3d 1186, 1196 (Fed. Cir. 2014). "The reasonable
expectation of success requirement refers to the likelihood of success in
combining references to meet the limitations of the claimed invention."
Intelligent Bio-Systems, Inc. v. Illumina Cambridge Ltd., 821 F .3 d 13 59,
1367 (Fed. Cir. 2016). In other words, "one must have a motivation to
combine accompanied by a reasonable expectation of achieving what is
claimed in the patent-at-issue." Id. "[T]he expectation of success need only
be reasonable, not absolute." Pfizer, Inc. v. Apotex, Inc., 480 F.3d 1348,
1364 (Fed. Cir. 2007)
In the instant case, Okamoto already teaches alternating red and blue
light, a fact that Appellants do not dispute. It is clear that, in Okamoto, a
timing protocol of some kind is contemplated because, in order to alternate
between light sources, the blue light must be turned off when the red light is
turned on and vice versa. See Okamoto ,r 6 (stating, "the intermittent
illumination of a certain amount of speed is possible, but a special drive
circuit is required and high speed flashing is not so easy."). Appellants'
alleged improvement over Okamoto is merely optimizing the timing
protocol for turning the lights on and off. In order to practice Okamoto, a
person of ordinary skill in the art would have to implement some kind of
timing protocol. This could be accomplished by researching similar patents
and/or printed publications or by engaging in experimentation. Karpinski
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teaches a timing protocol that results in a beneficial effect on the internal
chemistry of a plant. We think this would provide at least a logical starting
point for a person of ordinary skill in the art looking to practice Okamoto
and would have been undertaken with a reasonable expectation of success.
At best, Appellants' improvement over Okamoto is an incremental
improvement that would have been obtained by a practitioner in the exercise
of only ordinary skill in conducting routine experimentation. See In re
Applied Materials, Inc., 692 F.3d 1289, 1295 (Fed. Cir. 2012), quoting In re
Aller, 220 F .2d 454, 456 (CCP A 1955) ("[W]here the general conditions of a
claim are disclosed in the prior art, it is not inventive to discover the
optimum or workable ranges by routine experimentation"). Here, the person
of ordinary skill in the art would not have had to immediately resort to
experimentation, as Karpinski already provides a logical starting point for
implementation of a timing protocol.
[G]enerally, a claim to a product does not become nonobvious
simply because the patent specification provides a more
comprehensive explication of the known relationships between
the variables and the affected properties.
Applied Materials, 692 F.3d at 1297. Okamoto and Karpinski both teach
that beneficial biological results are obtained by irradiating plants with
alternating blue and red light. We agree with the Examiner that a person of
ordinary skill in the art would have found it obvious to apply Karpinski' s
timing protocol to Okamoto's method and would have done so with a
reasonable expectation of success.
Accordingly, we sustain the Examiner's unpatentability rejection of
claims 1, 2, and 5-12 over Okamoto and Karpinski.
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Unpatentability of Claim 13
over Okamoto, Karpinski, and Karpinski-2
Appellant does not argue for the separate patentability of claim 13
apart from arguments presented with respect to claim 1, which we have
previously considered. Consequently, we sustain the Examiner's rejection
of claim 13 over Okamoto, Karpinski, and Karpinski-2. See 37 C.F.R.
§ 4I.37(c)(iv) (failure to separately argue claims).
Alternative Grounds of Rejection over Oldenhof
As our decision to affirm the Examiner's rejection over combinations
based on Okamoto disposes of all pending claims on appeal, we do not reach
the Examiner's alternative grounds of rejection over Oldenhof and
combinations based thereon. See 37 C.F.R. § 4I.50(a)(l) (The affirmance of
the rejection of a claim on any of the grounds specified constitutes a general
affirmance of the decision of the examiner on that claim, except as to any
ground specifically reversed).
DECISION
The decision of the Examiner to reject claims 1, 2, and 5-13 is
affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(l )(iv).
AFFIRMED
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OPINION CONCURRING
STEPINA, Administrative Patent Judge.
I concur in the result reached by my colleagues with respect to the
rejections addressed in the Decision. However, under the circumstances of
this case, I believe all the rejections on appeal should have been reached.
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