SIGNIFY NORTH AMERICA CORPORATIONDownload PDFPatent Trials and Appeals BoardMar 26, 20212020005223 (P.T.A.B. Mar. 26, 2021) Copy Citation 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.). Appeal 2020-005223 Application 14/992,935 2 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. Appeal 2020-005223 Application 14/992,935 3 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 Appeal 2020-005223 Application 14/992,935 4 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 Appeal 2020-005223 Application 14/992,935 5 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. Appeal 2020-005223 Application 14/992,935 6 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 Appeal 2020-005223 Application 14/992,935 7 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. Appeal 2020-005223 Application 14/992,935 8 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 Appeal 2020-005223 Application 14/992,935 9 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. Appeal 2020-005223 Application 14/992,935 10 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 Copy with citationCopy as parenthetical citation