SIGNIFY NORTH AMERICA CORPORATION

Patent Trials and Appeals Board

Mar 26, 2021

2020005223 (P.T.A.B. Mar. 26, 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.
14/992,935 01/11/2016 Zdenko GRAJCAR 2012P80008US07 1469
138325 7590 03/26/2021
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
EVANS, EBONY E
ART UNIT PAPER NUMBER
3647
NOTIFICATION DATE DELIVERY MODE
03/26/2021 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):
Gigi.Miller@signify.com
jo.cangelosi@signify.com
kim.larocca@signify.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ZDENKO GRAJCAR
Appeal 2020-005223
Application 14/992,935
Technology Center 3600
Before BENJAMIN D. M. WOOD, LISA M. GUIJT, and
LEE L. STEPINA, Administrative Patent Judges.
STEPINA, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant1 appeals from the
Examiner’s decision to reject claims 21–28, which constitute all the claims
pending in this application.2 See Final Act. 1. We have jurisdiction under
35 U.S.C. § 6(b).
We REVERSE.

1 We use the term “Appellant” to refer to “applicant” as defined in 37 C.F.R.
§ 1.42. Appellant identifies the real party in interest as Signify North
America Corporation. Appeal Br. 3.
2 Claims 1–20, 29, and 30 are cancelled. Appeal Br. 24–25 (Claims App.).
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CLAIMED SUBJECT MATTER
The claims are directed to a method for controlling the sex-ratio of
animals, at the embryonic stage, via the use of selected wavelengths of light.
Spec. ¶ 2. Claim 21, reproduced below with emphasis added, is illustrative
of the claimed subject matter:
21. A method of promoting hatching of a plurality of eggs
comprising:
disposing the plurality of eggs in an incubating device
having a plurality of trays configured to receive the plurality of
eggs for incubation;
selecting, based on a sex-ratio to be promoted in embryos
of the plurality of eggs, a narrow range of wavelengths for a
spectrum of light with which to irradiate the plurality of eggs;
and
emitting light from a plurality of lighting elements onto
the plurality of eggs, the plurality of lighting elements
comprising a first set of lighting elements having the selected
narrow range of wavelengths including a spectrum substantially
concentrated within a blue wavelength range to promote the sex-
ratio in the embryos and a second set of lighting elements
emitting light having a spectrum substantially concentrated
within a red wavelength range to promote hatching of the
plurality of eggs.
REFERENCE
The prior art relied upon by the Examiner is:
Name Reference Date
Wade US 2,612,863 Oct. 7, 1952
Krijn US 10,172,296 B2 Jan. 8, 2019

REJECTIONS
I. Claims 21 is rejected under 35 U.S.C. § 101 as failing to
comply with the utility (“operability”) requirement. Final Act. 2.
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II. Claims 21–28 are rejected under 35 U.S.C. § 112, first
paragraph, as failing to comply with the enablement requirement. Final Act.
3.
III. Claims 21–28 are rejected under 35 U.S.C. § 103(a) as
unpatentable over Wade and Krijn. Final Act. 5.

OPINION
Rejection I—Utility
The Examiner determines that claim 21 “can be interpreted as
[reciting that] the blue wavelength range [is] used to promote an increase in
a female to male sex-ratio and an increase in a male to female sex-ratio.”
Final Act. 2. The Examiner finds “the [S]pecification does not disclose an
increase in males when DMRT1 is exposed to a wavelength in the 410nm -
430nm range or when the P450 aromatase absorbs light.” Id. at 2–3.
Therefore, according to the Examiner, “the [S]pecification fails to provide
data that proves that a blue wavelength promotes an increase in a male to
female sex-ratio as implied by claim 21.” Id. at 3.
Appellant contends paragraphs 9, 70, and 76–78 describe that a
particular range of wavelengths of light, namely, 450–495 nm, promotes the
production of male embryos, affecting the male-to-female ratio. Appeal Br.
11–14. Appellant argues the Examiner has failed to provide any
countervailing evidence that shows that one of ordinary skill in the art would
have a legitimate basis to doubt the credibility of the statements in the
Specification. See id. 13–14.
In response, the Examiner acknowledges that the Specification
discloses that the wavelength of the light to which embryos are exposed can
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be used “so that either a larger percentage of female animals or a larger
percentage of male animals result from incubation, as compared to a control
group of a plurality of eggs that are not illuminated with the electromagnetic
radiation, LTV, or blue light.” Ans. 3–4. Nonetheless, the Examiner
determines, “it is unclear what conditions the synthesis of P-450 Aromatase
or reduction of DMRT1 protein expression can be controlled and the male
percentage can be increased.” Id. at 4. The Examiner finds that
“[a]ccording to the disclosure ‘the lower levels of DMRTI in the eggs 30
resulting from the eggs 30 being exposed to the near-UV light or the blue
light leads to fewer male offspring and more female offspring developing in
the eggs.’ (Paragraph [0069]),” and “[a]ccordingly, the [S]pecification has
not been written so that production of ‘male’ embryos in eggs can be
promoted.” Id.
Appellant has the better position because the Specification explicitly
states that a wavelength of 410–450 nm is applied to the eggs in order to
increase female embryos, and a wavelength of 450–495 nm is applied in
order to increase male embryos. Spec. ¶ 9 (emphasis added); see also
original claims 3 and 13. Both of these ranges are characterized as being
“blue” light. See id. ¶¶ 54, 69. The Examiner does not persuasively explain
why conditions aside from the specific blue light wavelength need to be
specified for a person of ordinary skill in the art to practice the invention in a
way that increases the number of male embryos. See Ans. 3–4. In this
regard, we agree with Appellant’s contention that the Examiner has
presented no technical argument as to why the information provided in the
Specification would not increase the number of male embryos relative to
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female embryos. See Appeal Br. 10–12. Consequently, we do not sustain
the rejection of claim 21 as failing to comply with the utility requirement.
Rejection II—Enablement
The Examiner finds “[t]he [S]pecification fails to provide data that
proves that a blue light wavelength promotes a particular sex-ratio i.e. males
over females thus the result is not conclusive.” Final Act. 3. The Examiner
determines that “the claim can be interpreted as an the blue wavelength
range being used to promote an increase in a female to male sex-ratio and an
increase in a male to female sex-ratio.” Id. As explained by the Examiner,
Applicant discloses in paragraphs 0038 and 0069 of the
specification that DMRT1 can be reduced by exposing it to near
UV light i.e. a wavelength in the 410nm-430nm range and that
the results lead to fewer male offspring and more female
offspring and paragraph 0067-0068 further discloses exposing
the P450 aromatase molecule to light preventing chemical
reactions that would produce male avian while enhancing an
enzyme that would convert potential male avian to female avian.
However, the specification does not disclose an increase in males
when DMRT1 is exposed to a wavelength in the 410nm-430nm
range or when the P450 aromatase absorbs light. Thus the
specification fails to provide data that proves that a blue
wavelength promotes an increase in a male to female sex-ratio as
implied by claim 21.
Id.
Appellant contends the Examiner erred by failing to perform an
analysis using the Wands factors. Appeal Br. 16. Appellant also argues that
the Specification provides detailed instructions for various steps related to
the Examiner’s rejection in paragraphs 9, 40–50, 54, 57, 62–65, 67, 75, and
76. Id. at 16–17.
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In response, the Examiner finds that Appellant’s Specification
discloses that the intensity of the light illuminating the eggs can affect the
outcome of Appellant’s claimed process, and “[t]here is nothing disclosed
[by Appellant] regarding the intensity of the illuminated light, and thus it is
unclear what strength light was illuminated.” Ans. 4. The Examiner takes
the position that, “in order to increase the male or female percentage, or
improve hatchability for each type of avian originating from an egg, light
intensities must be examined randomly.” Id. at 5. Additionally, the
Examiner notes that claim 21 does not limit the animal from which the
recited egg originates, and, therefore, “examining light intensity for
increasing the percentage of males or females would require further trial and
error.” Id.
Appellant has the better position because, as discussed above
regarding Rejection I, the Specification teaches that a wavelength of 410–
450 nm is applied to the eggs in order to increase female embryos, and a
different wavelength, namely 450–495 nm, is applied in order to increase
male embryos. Spec. ¶ 9; see also original claims 3 and 13. As for the
Examiner’s statement that determining the proper light intensity to apply to
the eggs to change the sex-ratio “would require further trial and error,” the
fact that some experimentation may be required to practice the claimed
method does not render the original disclosure non-enabling. Rather, the
question is whether the amount of required experimentation would be undue.
See In re Wands, 858 F.2d 731, 736–737 (1988). Appellant disclosed that
the intensity of the blue light affects the process of changing the sex-ratio of
embryos. See Spec. ¶ 76. The Specification also explains that, “depending
on the avian species, whether turkey, chicken, duck, or the like, the exact
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wavelength and intensity (e.g., amount or number of lumens) can be
determined to optimize the increase in the percentage of males or females
born from a plurality of eggs.” Id. As light intensity is disclosed by
Appellant as affecting the claimed process, and the Examiner provides no
persuasive evidence or technical argument as to why optimizing the intensity
as directed by paragraph 76 would have been beyond the level of ordinary
skill in the art, we are not apprised of any reason the “trial and error” noted
by the Examiner would amount to undue experimentation. Accordingly, we
do not sustain the Examiner’s rejection of claim 21, and claims 22–28
depending therefrom, as failing to comply with the enablement requirement.
Rejection III—Unpatentability over Wade and Krijn
The Examiner finds that Wade teaches many of the steps recited by
claim 21, including emitting light from a plurality of lighting elements to
illuminate eggs and “selecting, based on a sex-ratio to be promoted in
embryos of the plurality of eggs, a narrow range of wavelengths for a
spectrum of light with which to irradiate the plurality of eggs.” Final Act. 5
(citing Wade 3:29–34). The Examiner finds Wade does not disclose
the plurality of lighting elements comprising a first set of lighting
elements having the selected narrow range of wavelengths
including a spectrum substantially concentrated within a blue
wavelength range to promote the sex-ratio in the embryos and a
second set of lighting elements emitting light having a spectrum
substantially concentrated within a red wavelength range to
promote hatching of the plurality of eggs.
Id. Thus, the Examiner finds, among other things, that Wade fails to
disclose that the first set of lighting elements emits light with the particular
requirements of the last paragraph of claim 21.
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To remedy this deficiency in Wade, the Examiner finds Krijn
discloses
a first set of lighting elements having the selected narrow range
of wavelengths (visible light wavelengths) including a spectrum
substantially concentrated within a blue wavelength range
(visible light wavelengths includes 450-495nm wavelengths i.e.
blue wavelength range furthermore the LEDs can be
programmed to emit a specific color thus a person can program
the first set of LEDs to emit a blue color).
Id. at 6. The Examiner also finds Krijn discloses
a second set of lighting elements emitting light having a spectrum
substantially concentrated within a red wavelength range (visible
light wavelengths includes 620-750nm wavelengths i.e. red
wavelength range furthermore the LEDs can be programmed to
emit a specific color thus a person can program the second set of
LEDs to emit a red color).
Id. The Examiner reasons that it would have been obvious to modify
Wade’s process to include a first set of lighting elements that perform the
same steps as recited in claim 21 “to uniformly emit light to the interior of
the incubator to increase hatchability of the eggs.” Id. at 6.
Appellant argues that the Examiner erred in finding that Wade
discloses selecting, based on a sex-ratio to be promoted in embryos of a
plurality of eggs, a narrow range of wavelengths. Appeal Br. 18–19; see
also Final Act. 5.
In response, the Examiner reiterates the finding that Wade discloses
this process, citing the same portion of Wade as was relied upon in the Final
Office Action. Ans. 5–6. The Examiner finds that Wade discloses the use
of visible light and such light has a wavelength of between 380 nm and 740
nm. Id. at 6. The Examiner further finds that 380 nm to 740 nm “is a
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narrow range of wavelengths of the electromagnetic spectrum and is used to
promote a sex-ratio of 1 : 1 i.e. 50% females or 50% males).” Id.
We agree with Appellant that Wade does not disclose the “selecting”
step recited in claim 1. The fact that a 50%/50% ratio of females to males,
which is, apparently, the natural ratio of females to males, exists in Wade’s
incubator (and Wade uses visible light in the same incubator), does not mean
that Wade discloses any kind of selection step relating to a sex-ratio, much
less a step of selecting of a narrow range of wavelengths of light based on
sex-ratio to be promoted.
Appellant also argues that Krijn is non-analogous art because “Krijn is
directed to a method for enhancing the nutritional value in an edible plant
part by light,” which, Appellant asserts, is a different field of endeavor from
Appellant’s invention and is not reasonably pertinent to the problem solved
by the invention. Id. at 21–22. Appellant describes the problem addressed
by the invention as “promoting production of embryos of a selected sex in
eggs.” Id. at 22.
The Examiner does not address this argument in the Answer. See
Ans. 5–6. Furthermore, we agree with Appellant that a person of ordinary
skill in the art concerned with affecting the sex-ratio of embryos in eggs
would not have looked to the teachings of Krijn, which relates to the
modification of the nutritional value of plants and is not related to embryos.
Thus, the Examiner improperly relied on Krijn in the rejection of the claims
under 35 U.S.C. § 103(a).
For the reasons discussed above, we do not sustain the Examiner’s
rejection of claim 21, and claims 22–28 depending therefrom, as
unpatentable over Wade and Krijn.
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CONCLUSION
The Examiner’s rejections are reversed.

DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
21 101 Utility 21
21–28 112 Enablement 21–28
21–28 103(a) Wade, Krijn 21–28
Overall
Outcome
21–28

REVERSED