Ex Parte MIGLIO et al

Patent Trials and Appeals Board

Jun 17, 2019

14904628 - (D) (P.T.A.B. Jun. 17, 2019)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR
14/904,628 01/12/2016 Roberta MIGLIO
22850 7590 06/19/2019
OBLON, MCCLELLAND, MAIER & NEUSTADT, L.L.P.
1940 DUKE STREET
ALEXANDRIA, VA 22314
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.
464396US99PCT 1016
EXAMINER
MARTIN, PAUL C
ART UNIT PAPER NUMBER
1653
NOTIFICATION DATE DELIVERY MODE
06/19/2019 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):
patentdocket@oblon.com
OBLONPAT@OBLON.COM
iahmadi@oblon.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBER TA MIG LIO and STEP ANO P ALMERY
Appeal2019-000854
Application 14/904,628
Technology Center 1600
Before JEFFREY N. FREDMAN, DEBORAH KATZ, and JOHN G. NEW,
Administrative Patent Judges.
FREDMAN, Administrative Patent Judge.
DECISION ON APPEAL
This is an appeal 1,2 under 35 U.S.C. § 134(a) involving claims to an
integrated process for cultivating algae or plants and producing electric
energy. The Examiner rejected the claims as obvious. We have jurisdiction
under 35 U.S.C. § 6(b). We reverse and enter a new ground of rejection.
1 Appellants identify the Real Party in Interest as ENI S.P.A. (See App. Br.
2).
2 We have considered and herein refer to the Specification of January 12,
2016 ("Spec."); Final Office Action of March 12, 2018 ("Final Act.");
Appeal Brief of August 14, 2018 ("App. Br."); Examiner's Answer of
October 2, 2018 ("Ans."); and Reply Brief of November 13, 2018 ("Reply
Br.").
Appeal2019-000854
Application 14/904,628
Statement of the Case
Background
Plants and microalgae "exploit solar energy for photosynthesis ...
however [] only a part of the solar energy is exploited for [] photosynthesis"
(Spec. 4:23-26). "Processes for converting radiations of solar energy not
exploited in photosynthesis into radiations that can be exploited by the same,
with a consequent increase in the growth of microalgae and plants, are
described in the art" (Spec. 4:26-30). "US 2011/0281295 describes an
equipment for cultivating algae in the presence of natural light" using a
"substrate comprising at least one luminescent compound capable of re-
emitting radiations whose spectrum is adapted for optimizing the formation
of a specific chemical compound from the photosynthesis of said algae"
(Spec. 5:23---6:2). "[A] photovoltaic greenhouse is known, which
incorporates one or more transparent silicon thin-film photovoltaic glass
panes ... capable of enabling photosynthesis in plants and the
contemporaneous production of electric energy" (Spec. 6:8-13). However,
the bronze color of the photovoltaic glass panes has a negative impact on the
photosynthesis of plants (see Spec. 6:15-23). "The Applicant has therefore
considered the problem of finding an integrated system which enables the
cultivation of algae or plants and the contemporaneous production of electric
energy without negatively interfering with the growth of the same" (Spec.
6:24--29).
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The Claims
Claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 are on appeal. Independent
claim 1 is representative3 and reads as follows:
1. An integrated process for the contemporaneous
cultivation of plants and the production of electric energy from
the same radiation source, the process comprising:
cultivating the plants by exposing them to said radiation
source in a cultivation area comprising at least one luminescent
solar concentrator comprising at least one photovoltaic cell
positioned on at least one outer side thereof, said at least one
luminescent solar concentrator being interposed between said
cultivation area and said radiation source so as to totally or
partially cover said cultivation area, to thereby obtain the plants
and the electric energy;
recovering the plants from the cultivation area; and
recovering the electric energy from the at least one
photovoltaic cell;
wherein:
the cultivation area is a greenhouse; and
the electric energy recovered from the at least one
photovoltaic cell is used in the cultivation of the plants,
wherein the luminescent solar concentrator comprises at
least one photoluminescent compound having an absorption
range within the range of solar irradiation, capable of activating
photosynthesis (Photosynthetically Active Radiations - PAR.s:
400 nm-700 nm) and an emission range capable of activating
the photovoltaic cell,
3 Independent claim 2 is identical except that it relates to the cultivation of
algae and not plants.
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Application 14/904,628
wherein the luminescent solar concentrator further
compnses
a matrix made of transparent material selected from:
transparent polymers and transparent glass, and
wherein the at least one photoluminescent compound is present
in or on the matrix of transparent material in an amount ranging
from 0. 1 g per surface unit to 5 g per surface unit, said surface
unit referring to a surface of the matrix expressed as m2.
The Re} ection
The Examiner has rejected claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27
under 35 U.S.C. § 103 as obvious over Sylvestre4 and Carter5 (Final Act.
10).
The Examiner finds Sylvestre teaches cultivating algae by covering
the cultivation area with a luminescent solar concentrator ("LSC") having a
at least one photoluminescent compound having an absorption range within
the range of solar radiation, capable of activating photosynthesis (Final Act.
10-11 ). The Examiner finds Carter teaches an LSC for use in greenhouse
and agricultural covers comprising a photoluminescent compound and a
photovoltaic ("PV") cell "wherein the LSC is configured to produce power
without harming (negatively interfering with) plant growth" (Final Act. 12,
emphasis omitted). The Examiner acknowledges that Sylvestre does not
teach "recovering [] and using the electric energy from the PV cell to
cultivate [] plants or algae" (Final Act. 11 ). However, the Examiner
concludes:
4 Sylvestre, US 2011/0281295 Al, published Nov. 17, 2011.
5 Carter et al., US 2014/035276 Al, published Dec. 4, 2014.
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Application 14/904,628
It would have been further obvious to those of ordinary skill in
the art before the effective filing date of the claimed invention
to recover the generated power and apply it to the cultivation of
the plants or algae because this would allow the use of nonsolar
light sources ( such as grow lamps) to be used in times of little
or no solar light without incurring additional power cost
(Final Act. 13).
Appellants contend "neither Sylvestre nor Carter disclose the recovery
and use of electric energy from the photovoltaic cell to cultivate the plants
and algae as recited in independent claims 1 and 2" (App. Br. 10).
Appellants contend "[b] ecause there is no suggestion of all of the claimed
limitations, there is no prima facie case of obviousness" (id.).
The issue with respect to this rejection is: Does the evidence of
record support the Examiner's conclusion that the combined prior art teaches
or suggests all the elements of the claims?
Principles of Law
"[W]hile an analysis of obviousness always depends on evidence that
supports the required Graham factual findings, it also may include recourse
to logic, judgment, and common sense available to the person of ordinary
skill that do not necessarily require explication in any reference or expert
opinion." Perfect Web Techs., Inc. v. InfoUSA, Inc., 587 F.3d 1324, 1329
(Fed. Cir. 2009).
Analysis
We are persuaded by Appellants' argument. The Examiner provides
no specific teaching or suggestion of recovering and using electric energy
from the PV cell to cultivate plants or algae. Although "common sense can
be invoked, even potentially to supply a limitation missing from the prior
art, it must still be supported by evidence and a reasoned explanation ....
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[T]his is particularly true where the missing limitation goes to the heart of an
invention." Arendi S.A.R.L. v. Apple Inc., 832 F.3d 1355, 1363 (Fed. Cir.
2016).
Conclusion of Law
The evidence of record does not support the Examiner's conclusion
that Sylvestre and Carter teach or suggest using the electric energy recovered
from at least one PV cell in the cultivation of plants ( claim 1) or algae ( claim
2). Accordingly, we do not sustain the Examiner's rejection.
New Ground of Rejection
Under the provisions of 3 7 C.F .R. § 41. 50(b ), we enter the following
new ground of rejection. Claims 1-3, 5, 6, 8, 12, 13, 15, and 19-27 are
rejected under 35 U.S.C. § 103 as obvious over Sylvestre, Carter, and
Chuang. 6
Findings of Fact
1. Sylvestre teaches:
a device for algae cultivation under natural light comprising an
enclosure with a cultivation medium and algae to cultivate,
wherein said device comprises additionally a substrate to receive
solar radiation in order to photo convert said solar radiation, said
substrate comprising at least one luminescent compound
enabling the reemission of a radiation whose spectrum is adapted
to the optimization of a biological parameter of interest resulting
from the [] algae photosynthesis . . . [wherein] the substrate is
interposed between incident solar radiation and the enclosure
(Sylvestre ,r,r 21, 22).
6 Chuang et al., US 2012/0198763 Al, published Aug. 9, 2012.
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2. Sylvestre teaches "[t]he luminescent compounds used can be chosen
from ... Lumogen 083 perylene (BASF) ... Lumogen 305 peylene [sic]
(BASF)" (Sylvestre ,r,r 57, 65, 68).
3. Sylvestre teaches "[c]oncentrations used vary preferentially between
0.1 and 1,000 ppm, preferentially between 1 and 100 ppm" (Sylvestre ,r 79).
4. Sylvestre teaches "[t]he substrate within which the luminescent
compounds are integrated is a plastic, for example acrylic [] plastic such as
polymethylmethacrylate (PMMA)" (Sylvestre ,r 83).
5. Sylvestre teaches an embodiment of a tubular photobioreactor, which
includes luminescent compounds in the walls, and "integrates pumps and a
system to inject concentrated carbon dioxide" (Sylvestre ,r 105).
6. Sylvestre teaches using an LSC to modify sunlight leads "to an
advantageous modification of the temperature profile" by decreasing the
daily temperature and increasing the nightly temperature (Sylvestre ,r 93).
7. Sylvestre teaches using algae to convert sunlight energy into storable
and modifiable biofuels, as opposed to photovoltaic electricity which is
"difficult to store" and needs to be utilized as soon as it is produced (see
Sylvestre ,r 15).
8. Carter teaches "luminescent solar collectors which have an absorption
and optical [sic] designed for both plant growth and power production for
applications involving plant growth under windows having LSCs, including
greenhouses ... and agricultural covers" (Carter ,r 5).
9. Carter teaches the "ratio of absorption in each band is chosen for
optimum photosynthesis and plant growth. The polymer layer is designed to
transmit the radiated light to the light energy converter and wherein the light
energy converter is optically coupled to the luminescent sheet" (Carter ,r 6).
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10. Carter teaches adding a sheet of IR-emitting material, a diffuser, or an
IR-absorber/reflector to further improve efficiency and plant growth while
reducing cooling costs (Carter ,r 10).
11. Carter teaches the "light-energy converter is typically a photovoltaic
(PV) .... The photovoltaic is cut into strips that can be mounted either on
the edge, or perpendicular, to the luminescent sheet (the standard LSC
configuration) or on the front or parallel to the luminescent sheet" (Carter
i1 42).
12. Figure 2 of Carter is reproduced below:
Fig. 2 204
202 202 205
Figure 2 of Carter shows "a representative example of an LSC architecture
where the PV cell is attached to a rigid frame that is non-transparent"
including PV 203, luminescent sheet 204 and rigid frame 205
(Carter ,r 28).
13. Carter teaches "[c]onnectors are added to the light energy converter so
that the electricity generated can be externally harnessed" (Carter ,r 34).
14. Carter teaches "[t]he individual strips of photovoltaic cells are wired
in series or parallel with the wires coming out of the LSC package so they
can be easily connected to" (Carter ,r 43).
15. Carter teaches:
The ideal fluorescent material for the luminescent sheet has [] a
fluorescent dye with a quantum yield greater than 50% and
emits a majority of its photons between 600 and 690 nm, where
chlorophyll a and b are most active. The fluorescent dye is also
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chosen to minimize overlap between the absorption spectra and
fluorescence spectra as well as to minimize the absorption of
light that is absorbed by chloropyll [sic] a and b (between 410
and 490 nm and between 620 and 680 nm) while maximizing
the light absorption in the remaining portions of the solar
spectrum (i.e., 380 to 410 nm, 490 to 620 nm, and 680 nm to
780 nm)
( Carter ,r 3 6).
16. Carter teaches "[t]he dye can be diluted into the polymer host to
maximize the photoluminescence efficiency .... We observe an optimal
range for the luminescent dye Lumogen 305 between 0.2% and 0.001 %,
which depends both on the absorption coefficient of the dye and the
thickness of the luminescent sheet" (Carter ,r 37).
17. Carter teaches:
The typical upper, lower and near optimal absorptions for the
luminescent Lumogen 305 dye to optimize both power
production and plant growth is shown in FIG. 5 and further
described in Table 1. These results are for dye diffused into a 3
mm thick acrylic substrate with concentration ranging from
0.0086% (238 F) to 0.0032% (265 F) LR305 in PMMA.
Similar results have been obtained in luminescent sheets that
are 500 micron thick and below 100 microns thick, with the
concentration scaling according to Beer's law.
(Carter ,r 38).
18. Chuang teaches a PV greenhouse with at least one thin-film solar cell
module mounted on the roof (Chuang ,r 13).
19. Chuang teaches the "thin-film solar cell module is useful in
converting solar energy within a pre-selected light band of sunlight into
electricity and simultaneously the light which is not absorbed by the thin-
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Application 14/904,628
film solar cell module ... can be utilized by plants or crops for
photosynthesis" (Chuang ,r 13).
20. Chuang teaches the greenhouse may include ventilation fans, LED
lights, and an auto-sprinkling system (Chuang ,r,r 23-24).
21. Chuang teaches:
All the electronic equipment[], such as the ventilation fan, a
cooling apparatus, the heater, a humidifier, the sprinkler, the
LED light, in the photovoltaic greenhouse 1 may be powered by
the thin-film solar cell module 20. In addition to the energy-
saving, light-band-modifying, self-supportive advantageous, the
photovoltaic greenhouse 1 of the present invention may serve as
a power plant ....
(Chuang ,r 30).
Principles of Law
"The combination of familiar elements according to known methods
is likely to be obvious when it does no more than yield predictable results."
KSR Int'! Co. v. Teleflex Inc., 550 U.S. 398,416 (2007). "[W]hen the
question is whether a patent claiming the combination of elements of prior
art is obvious," the answer depends on "whether the improvement is more
than the predictable use of prior art elements according to their established
functions." KSR, 550 U.S. at 417.
"[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." In re Aller, 220 F.2d 454, 456 (CCPA 1955).
Analysis
Our analysis substantially relies upon Sylvestre and Carter as
explained by the Examiner in the Final Office Action, adding Chuang to
address the requirement in claim 1 that "the electric energy recovered from
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the at least one photovoltaic cell is used in the cultivation of the plants."
Because our reasoning is otherwise substantially the same as that of the
Examiner, we will address Appellants' arguments, insofar as they remain
applicable to this rejection.
We begin our analysis with claim construction. Appellants argue that
the Specification "defines 'outer side' with respect to the positioning of the
photovoltaic cell on at least one outer side of the luminescent solar
concentrator rather that the position of the LSC relative to the incident
radiation" (App. Br. 20-21 ). Appellants argue that "when construed
consistent with the specification, the broadest reasonable interpretation of
'outer sides' is the peripheral portions of the luminescent solar concentrator"
(App. Br. 22, citing Spec. 1:8-16; 6:29-7:5). Appellants present the
following diagram to support their interpretation of "outer side" in the
Appeal Brief:
Appeal Brief Figure 3 shows an LSC interposed between a cultivation area
and a radiation source, having four outer sides being the peripheral portions
of the LSC.
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Application 14/904,628
(Id.)
We agree with Appellants' proposed interpretation of the "outer side"
as the peripheral portions of the LSC. However, we do not agree that this
interpretation distinguishes the claims from the prior art.
We find that Carter teaches mounting photovoltaic cells on the edge,
or peripheral portion, of the LSC (FFs 11, 12). Appellants argue that Carter
teaches away from the outer side by suggesting that the front active face of
the PV cell is attached parallel to the surface of the luminescent sheet (App.
Br. 29). However, "[t]he prior art's mere disclosure of more than one
alternative does not constitute a teaching away from ... alternatives because
such disclosure does not criticize, discredit, or otherwise discourage the
solution claimed." In re Fulton, 391 F.3d 1195, 1201 (Fed. Cir. 2004).
Here, Carter teaches multiple alternatives for mounting photovoltaic cells,
expressly including "on the edge" of the LSC (FF 11 ). Therefore, we find
the prior art teaches "at least one luminescent solar concentrator comprising
at least one photovoltaic cell positioned on at least one outer side thereof."
Chuang teaches a greenhouse which recovers electric energy from the
sun and uses the energy to cultivate plants in the greenhouse by powering
electrical equipment, e.g., ventilation fan, cooling apparatus, and sprinkler
(FFs 18-20). Sylvestre (FF 6) and Carter (FF 10) teach a need for cooling in
algae and plant cultivation, respectively. We find that it would have been
obvious to the person of ordinary at the time the invention was made to
improve the cultivation of algae (Sylvestre) or plants (Carter) using the
generated PV electrical energy to power equipment such as a ventilation fan,
cooling apparatus, and sprinkler as taught by Chuang for benefits identified
by Chuang including energy savings and the ability of the system to be self-
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supporting (FF 21 ). We find the improvement would have been the
predictable use of prior art elements according to their established functions.
Therefore, we find the combined prior art teaches "the electric energy
recovered from the at least one photovoltaic cell is used in the cultivation of
the plants."
Appellants argue Sylvestre teaches away from using PV s in
combination with an LSC for algae cultivation (App. Br. 8-9). In particular,
Appellants cite to Sylvestre's contrast ofbiofuels with PVs which produce
electricity that is difficult to store and needs to be utilized as soon as it is
produced (see App. Br. 11, citing Sylvestre ,r 15).
We are not persuaded that Sylvestre teaches away from combining the
LSC with a PV cell. "Although statements limiting the function or
capability of a prior art device require fair consideration, simplicity of the
prior art is rarely a characteristic that weighs against obviousness of a more
complicated device with added function." In re Dance, 160 F.3d 1339, 1344
(Fed. Cir. 1998). Here, Sylvestre teaches biofuels are a superior method of
recovering and storing solar energy as compared to PV cells, not against
recovering PV electricity for reuse in cultivation (see FF 7). Sylvestre does
not teach away from using electricity for cultivation as Sylvestre includes an
embodiment which utilizes a pump for cultivation (see FF 5). Sylvestre also
teaches the need for temperature regulation for cultivating algae (see FF 6).
Given that the combination of Carter and Chuang teaches devices for
recovering solar energy and using that energy to power cultivating
equipment, "there is something in the prior art as a whole to suggest the
desirability, and thus the obviousness, of making the combination," even if it
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is not the most desirable combination available. See In re Fulton, 391 F.3d
at 1200 (emphasis omitted).
Sylvestre teaches the concentration of at least one photoluminescent
compound present in a plastic substrate varies preferentially between 1 and
100 ppm (0.0001 % and 0.01 %) (FF 3). Carter teaches an optimal range for
the luminescent dye between 0.001 % and 0.2% (10 ppm and 2000 ppm) in
order to maximize photoluminescence efficiency (FF 16). The Examiner
finds:
While the cited prior art does not teach wherein the
photoluminescent compound is present in the LSC in an amount
ranging from 0.1 g per surface unit to 3 or 5 g per surface unit,
the differences in concentration between the cited prior art and
that of the instant invention are not sufficient to provoke
nonobviousness in the absence of a showing of criticality of the
claimed concentration range.
(Final Act. 14).
Appellants argue that the Examiner errs in finding the differences in
concentration of photo luminescent compound "are not sufficient to provoke
nonobviousness in the absence of showing criticality of the claimed
concentration range" (App. Br. 13). Appellants argue that "neither Sylvestre
nor Carter recognize the concentration per surface unit to be a result-
effective variable and Appellant has shown the claimed range is
unexpectedly advantageous for the cultivation of algae or plants and the
contemporaneous production of electric energy" (App. Br. 13-14).
We are not persuaded by Appellants' argument. Carter teaches that
the concentration of photo luminescent compounds can be optimized for
"both power production and plant growth" (see FFs 16, 17). Therefore, the
art teaches the concentration of photo luminescent compounds is a result-
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effective variable. We do not find the recitation of "concentration per
surface unit" to be a distinguishing limitation of the claims as "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." In re Applied Materials,
Inc., 692 F.3d 1289, 1297 (Fed. Cir. 2012) (prior art disclosed number of
grooves per area rather than the claimed groove width).
The prior art provides a range of concentration of photo luminescent
compounds in the LSC (10 to 2000 ppm). The concentration range overlaps
the concentration used in the Examples provided in the Specification, e.g.,
100 ppm (Example 1) and 200 ppm (Example 2), which are encompassed by
the claimed range (see Spec. 17:27-18:24). A prima facie case of
obviousness typically exists when the ranges of a claimed composition
overlap the ranges disclosed in the prior art. In re Applied Materials, Inc.,
692 F.3d at 1295. Accordingly, we determine the claims are prima facie
obvious over the combination of Sylvestre, Carter, and Chuang.
Appellants submit a Declaration from Roberta Miglio under 37 C.F.R.
§ 1.132 dated Feb. 22, 2018, as evidence of unexpected results (App. Br.
17). Appellants argue:
From the Examples submitted in the Miglio Declaration
and those in the original application, it emerges that at
concentrations above 5 g per m2 of surface, the amount (%) of
blue light of the spectrum is reduced such that there is a serious
slowing effect on the algal growth. On the other hand, when
the concentration of the dye is less than 0.1 g per m2 of surface,
the amount of light convertible into electricity is too small to be
exploited. "Consequently, there is a defined range of dye
concentration per m2 of surface in the luminescent solar
concentrator (LSC) which is an amount ranging from 0.1 g per
surface unit to 5 g per surface unit, said surface unit referring to
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a surface of the matrix expressed as m2, that is especially and
unexpectedly advantageous for the simultaneous production of
electricity and growth of algae or more generally of green
plants."
(App. Br. 18-19). In their discussion of the concentration of luminescent
compounds, Appellants contrast their Examples with Carter, which "shows
the negative impact on the efficiency ... for luminescent dye concentrations
where absorption over the visible spectrum has not been optimized for plant
growth." (App. Br. 16, emphasis added).
We are not persuaded by Appellants' submitted evidence of
unexpected results. "To be particularly probative, evidence of unexpected
results must establish that there is a difference between the results obtained
and those of the closest prior art, and that the difference would not have been
expected by one of ordinary skill in the art at the time of the invention."
Bristol-Myers Squibb Co. v. Teva Pharms. USA, Inc., 752 F.3d 967, 977
(Fed. Cir. 2014). Appellants' comparison to Carter is against a spectrum
that has not been optimized for plant growth, and therefore is not a
comparison to the closest prior art. Moreover, Carter teaches that the
concentration of luminescent compound may be optimized for both power
production and plant growth (see FFs 15-17). That Appellants have
identified optimal concentrations of luminescent compounds overlapping the
concentration range of Carter is neither surprising nor unexpected. See In re
Soni, 54 F.3d 746, 750 (Fed. Cir. 1995). Therefore, we conclude that
Appellants' evidence does not overcome prima facie obviousness over the
prior art.
With respect to the dependent claims (3, 5, 6, 8, 12, 13, 15, and 19-
27), we adopt the Examiner's reasoning and findings of fact as modified by
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Chuang (see Final Act. 10-14). Accordingly, we conclude that claims 1-3,
5, 6, 8, 12, 13, 15, and 19-27 would have been obvious to a person of
ordinary skill in the art at the time the invention was made over Sylvestre,
Carter, and Chuang.
SUMMARY
In summary, we reverse the rejection of claims 1-3, 5, 6, 8, 12, 13, 15,
and 19-27 as obvious over Sylvestre and Carter.
Weenteranewgroundofrejectionofclaims 1-3, 5, 6, 8, 12, 13, 15,
and 19-27 as obvious over Sylvestre, Carter, and Chuang.
This decision contains a new ground of rejection pursuant to
37 C.F.R. § 4I.50(b). Section 4I.50(b) provides "[a] new ground of rejection
pursuant to this paragraph shall not be considered final for judicial review."
Section 41.50(b) also provides:
When the Board enters such a non-final decision, the
appellant, within two months from the date of the decision,
must exercise one of the following two options with respect to
the new ground of rejection to avoid termination of the appeal
as to the rejected claims:
(1) Reopen prosecution. Submit an appropriate
amendment of the claims so rejected or new Evidence relating
to the claims so rejected, or both, and have the matter
reconsidered by the examiner, in which event the prosecution
will be remanded to the examiner. The new ground of rejection
is binding upon the examiner unless an amendment or new
Evidence not previously of Record is made which, in the
opinion of the examiner, overcomes the new ground of rejection
designated in the decision. Should the examiner reject the
claims, appellant may again appeal to the Board pursuant to this
subpart.
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(2) Request rehearing. Request that the proceeding be
reheard under § 41.52 by the Board upon the same Record. The
request for rehearing must address any new ground of rejection
and state with particularity the points believed to have been
misapprehended or overlooked in entering the new ground of
rejection and also state all other grounds upon which rehearing
is sought.
Further guidance on responding to a new ground of rejection can be
found in the Manual of Patent Examining Procedure§ 1214.01.
REVERSED; 37 C.F.R. § 4I.50(b)
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