Biological Innovation and Optimization Systems, LLC

Patent Trials and Appeals Board

May 21, 2021

2020004041 (P.T.A.B. May. 21, 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.
16/270,936 02/08/2019 Robert Soler BIOSP005 1077
67362 7590 05/21/2021
MLO
12707 High Bluff Drive, Suite 200
San Diego, CA 92130
EXAMINER
WALL, VINCENT
ART UNIT PAPER NUMBER
2822
NOTIFICATION DATE DELIVERY MODE
05/21/2021 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):
MLOPAIR@mlo-ip.com
eofficeaction@appcoll.com
heather@mlo-ip.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte ROBERT SOLER and WILLIAM COULTER
Appeal 2020-004041
Application 16/270,936
Technology Center 2800
Before JEFFREY B. ROBERTSON, SHELDON M. MCGEE, and
JANE E. INGLESE, Administrative Patent Judges.
ROBERTSON, Administrative Patent Judge.
DECISION ON APPEAL1
STATEMENT OF THE CASE
Pursuant to 35 U.S.C. § 134(a), Appellant2 appeals from the
Examiner’s decision to reject claims 10–24 and 27–30. See Appeal Br. 3, 5.
We have jurisdiction under 35 U.S.C. § 6(b).

1 This Decision includes citations to the following documents:
Specification filed February 8, 2019 (“Spec.”); Final Office Action mailed
September 12, 2019 (“Final Act.”); Appeal Brief filed February 28, 2020
(“Appeal Br.”); Examiner’s Answer mailed April 3, 2020 (“Ans.”), and
Reply Brief filed May 8, 2020 (“Reply Br.”).
2 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 Biological
Innovation Optimization Systems, LLC. Appeal Br. 3.
Appeal 2020-004041
Application 16/270,936

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We affirm in part.
CLAIMED SUBJECT MATTER
Appellant states the invention relates to a light emitting apparatus with
melanopic emission spectrum. Spec. 7. Claim 10, reproduced below, is
illustrative of the claimed subject matter (Appeal Br., Claims Appendix 30–
31):
10. A light emitting apparatus, comprising:
a first light emitting diode (LED) with an emission
spectrum comprising a corrected color temperature from 3000 K
to 4000 K; and
a second LED with a melanopic emission spectrum
comprising:
a first peak centered at a wavelength from 480 nm
to 500 nm; and
a second peak centered at a wavelength from 640
nm to 750 nm;
wherein the intensity of the first peak is greater than
the intensity of the second peak;
wherein:
light is emitted from the light emitting apparatus
comprising light from the first and second LEDs, and the emitted
light comprises:
chromaticity coordinates (x,y), in the CIE 1931
color space diagram using the 1964 10° Supplementary
Standard Observer, that are within a one-step MacAdam
ellipse from the black body locus in the range of
chromaticity coordinate x from 0.34 to 0.45;
a cyanosis observation index (COI) less than 3.3;
and
a color rendering index (CRI) greater than 80.
Appeal 2020-004041
Application 16/270,936

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REFERENCES
The prior art relied upon by the Examiner is:
Name Reference Date
Aikala US 2010/0259190 A1 Oct. 14, 2010
Beers et al. (“Beers”) US 2011/0309773 A1 Dec. 22, 2011
Dubuc et al. (Dubuc”) US 2012/0161170 A1 June 28, 2012
Klase et al. (“Klase”) US 2012/0218750 A1 Aug. 30, 2012
Storey et al. (“Storey”) US 2017/0146226 A1 May 25, 2017

REJECTIONS
1. Claim 24 is rejected under 35 U.S.C. § 112(a) as failing to comply with
the written description requirement. Final Act. 3–4.
2. Claims 28 and 29 are rejected under 35 U.S.C. § 112(b) as being
indefinite. Final Act. 5–6.
3. Claims 10–24, and 27–30 are rejected under 35 U.S.C. § 103 as being
unpatentable over Storey, Klase, Beers, and Dubuc. Final Act. 7–15.

OPINION
At the outset, we observe, as does the Examiner, that Appellant does
not substantively argue Rejection 2, the rejection of claims 28 and 29. Ans.
17; see generally Appeal Br. Thus, we summarily sustain the rejection of
claims 28 and 29.

Rejection 1
In rejecting claim 24 as including new matter that lacks written
description support, the Examiner found the recitation “the first and second
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Application 16/270,936

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light emitting diodes (LEDs) further comprise a global maximum in power
density at a wavelength from 480 nm to 580 nm” lacked support in the
Specification. Final Act. 3. The Examiner found that the Specification
describes the total radiant power for the wavelength from 480 to 580 nm is
in comparison to another range of wavelengths such as 400 to 480 nm,
which does not support the global maximum in power density at the recited
wavelengths. Id. at 3–4, citing Spec. ¶ 40. In addition, the Examiner found
that although the global maximum value of the spectrum may be between
480 nm to 500 nm, the power density in the range 0 to 480 nm, or 500 nm
and onward may have a maximum power density greater than the global
maximum value of the spectrum at the limited range of 480 nm to 500 nm.
Id. at 4, citing Spec. ¶ 44.
Appellant contends one skilled in the art would recognize the “global
maximum” described in the Specification is equivalent to “global maximum
in power density” because the plot in Figure 2A has a y-axis with units of
“watts/nm,” which are units of power density. Appeal Br. 27, citing Spec.
¶ 44. In addition, Appellant contends claim 24 recites the global maximum
in power density is at “a” wavelength from 480 nm to 500 nm, and not a
global maximum integrated over a wavelength range, such that integrated
power densities over a wavelength range are irrelevant. Id. at 27–28.
To satisfy the written description requirement, a patent applicant must
“convey with reasonable clarity to those skilled in the art that, as of the filing
date sought, he or she was in possession of the invention.” Vas-Cath Inc. v.
Mahurkar, 935 F.2d 1555, 1563-64 (Fed. Cir. 1991) (emphasis omitted).
The mere absence of literal support for a claim limitation “does not, in and
of itself, establish a prima facie case for lack of adequate descriptive support
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Application 16/270,936

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under the first paragraph of 35 U.S.C. 112.” Ex parte Parks, 30 USPQ2d
1234, 1236 (BPAI 1993) (citations omitted).
We are persuaded by Appellant’s arguments. The Examiner generally
responded to Appellant’s contentions stating that the Specification
paragraphs 39–44 do not provide support for a global maximum power
density. Ans. 17. The Examiner stated further that even if Appellant is
correct, the limitation is a result effective variable. Id. However, although
the Examiner expressly cites paragraphs 39 and 44, which discuss Figure
2A, the Examiner does not address Appellant’s contention that Figure 2A
provides evidence that of a global maximum in power density at a
wavelength from 480 to 500 nm.
Further, the Specification states “the combined light from the two
LEDs has a spectrum with a global maximum from 480 nm to 500 nm.”
Spec. ¶ 44. The Specification, in discussing “maximum” intensity profiles,
consistently indicates that the maximums are with regard to the power
density of a peak within a wavelength band. Spec. ¶ 40. Thus, in view of
Appellant’s unanswered arguments with respect to the units expressed in
Figure 2A and the above-referenced paragraphs in the Specification, we are
of the view the Examiner’s position that the recitation in claim 24 of “the
first and second light emitting diodes (LEDs) further comprise a global
maximum in power density at a wavelength from 480 nm to 580 nm”
constitutes new matter is not sufficiently supported by the record.
Accordingly, we reverse the Examiner’s decision to reject claim 24 as
lacking written description support for containing new matter.

Appeal 2020-004041
Application 16/270,936

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Rejection 3
We confine our discussion to claim 10, which is sufficient for
disposition of this rejection.

The Examiner’s Rejection
In rejecting claim 10 as unpatentable over Storey, Klase, Beers, and
Dubuc, the Examiner found Storey discloses a first light emitting diode
(LED) with an emission spectrum and a second LED, where light emitted
from a light emitting apparatus comprises light from the first and second
LEDs. Final Act. 7. The Examiner found Storey does not explicitly teach
that the first LED has an emission spectrum comprising a corrected color
temperature from 3000K to 4000K, the second LED has a melanopic
emission spectrum including the first and second peak wavelengths, the
intensity requirements of the first and second peaks, the emitted light
includes the recited chromaticity coordinates, the cyanosis observation index
(COI), or color rending index (CRI) recited in claim 10. Id. at 7–8.
The Examiner found Aikala discloses a LED with a melanopic
emission spectrum having first and second peaks with wavelengths including
those recited in claim 10, as well as the intensity relationship recited in claim
10. Id. at 8. The Examiner found the emission peak is a result effective
variable based upon the photosynthesis frequencies of the desired plant that
are necessary for plant growth. Id.
The Examiner determined it would have been obvious to substitute the
first or the second LED of Storey with the LED of Aikala, because both
Storey and Aikala recognize the type of light required for plant growth is a
result effective variable based upon the plant, such that a light fixture
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including both a white light LED and the LED of Aikala would allow for
optimization of light growing conditions for the plant. Id. at 8–9.
As to the recitation in claim 10, that “the emitted light comprises:
chromaticity coordinates (x,y), in the CIE 1931 color space diagram using
the 1964 10° Supplementary Standard Observer, that are within a one-step
MacAdam ellipse from the black body locus in the range of chromaticity
coordinate x from 0.34 to 0.45,” the Examiner found Klase discloses the
specific chromaticity coordinates chosen are result effective variables based
on optimal conditions for maximum plant growth. Id. at 9. As such, the
Examiner determined the chromaticity coordinates recited in claim 10 would
have been obvious. Id. at 9–10.
Regarding the corrected color temperature (CCT), COI, and CRI
recited in claim 10, the Examiner found Beers discloses a method for
achieving a CCT and COI using LEDs to allow one to better see the true
color of an object such as a plant, where CCT is a design parameter based
upon a specific standard and COI is a characteristic of a device. Id. at 11–
12. As a result, and because the prior art discloses the same structure as in
claim 10, the Examiner found the structure should have the same COI value
as recited in the claim. Id. at 12. As to the CRI, the Examiner found Beers
discloses that for CCT between 3300K and 5300K and COI less than 3.3,
one would expect a CRI value greater than about 70, and preferably greater
than 80, which indicates CRI is a result effective variable based on the CCT
and COI of the device. Id. The Examiner also found that based on how CRI
can affect illumination, it would have been obvious to optimize the CRI
values for LEDs. Id. at 12–13.

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Appellant’s Arguments
Appellant argues, inter alia, the majority of cited prior art is
concerned with light for plant growth, and as a result, it is unconcerned with
light that is close to the black body locus, because the prior art is
unconcerned with light that appears white to people. Appeal Br. 13.
Appellant argues that Beers, which is the only reference describing
optimizing light apparatuses for people, does not recognize the importance
of the 10-degree observer, because Beers is not concerned with producing a
light source with a large amount of melanopic light. Id.
Appellant argues the cited prior art does not disclose the critical
wavelength ranges for the second LED recited in claim 10. Id. at 14.
Specifically, Appellant contends the majority of wavelengths in Aikala do
not produce light with the characteristics recited in claim 10, where the
wavelength range of 480 to 500 nm is critical and signifies melanopic light,
the emitted light appears white, has a COI<3.3, and a CRI>80. Id. at 14–15.
Appellant contends that the recited wavelength range of 640 nm and 750 nm
is also critical because it enables the two LEDs present in claim 10 to be
mixed together to create light that appears white, and have the COI and CRI
characteristics recited in claim 10. Id. at 16. Appellant contends that Aikala
discloses a wavelength range where almost half the range is outside the
range recited in claim 10 due to Aikala’s focus on plants, which have
different light requirements than humans and do not have melanopsin
photoreceptors. Id. at 16–19.
Appellant contends COI and CRI are not result effective variables,
rather, they are attributes of a particular spectrum, and cannot be used to
determine color. Id. at 19–20. Appellant argues that it would not have been
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Application 16/270,936

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obvious to have combined Storey, Aikala, Lase, Beers, and Dubuc to arrive
at claim 10, mainly because Beers does not disclose illumination with a
significant intensity from 480 to 500 nm, a combination of LEDs that have a
significant amount of melanopic light, a COI less than 3.3, and a CRI greater
than 80. Id. at 20–21. In addition, Appellant contends Dubuc does not
disclose how to change CRI of an LED or what effect changing the CRI
would have on apparent color, COI or CRI when a first LED is mixed with a
second LED. Id. 22.

Issue
Did the Examiner err in determining that the prior art renders obvious
the light emitting apparatus recited in claim 10, which is capable of emitting
light having the characteristics recited therein?

Discussion
We are persuaded by Appellant’s arguments. At the outset, we
observe that claim 10 recites a light emitting apparatus, such that in order to
render the claim obvious, the Examiner must establish that it would have
been obvious to have constructed an apparatus with a combination of LEDs
including a second LED with a melanopic emission spectrum having the first
and second peaks with the intensity requirements recited in claim 10, and
that would be capable of producing emitted light having the properties
recited in claim 10.
Although the Examiner relies on the combination of Storey and
Aikala for disclosing a light emitting apparatus having first and second
LEDs, where the second LED has a melanopic emission spectrum as recited
Appeal 2020-004041
Application 16/270,936

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in claim 10, as pointed out by Appellant, Beers is cited for support that the
COI and CRI values recited in claim 10 are result effective variables.
Appeal Br. 20. In this regard, the Examiner stated generally that Beers
discloses COI and CRI are variables that may be used in designing a light
source to affect the end result. Ans. 5, 13. As such, we understand the
Examiner’s position to be that further modification to the LED sources of
the modified device of Storey, Aikala (and Klase) would be required in order
for the device to be capable of producing emitted light having the COI and
CRI recited in the claim.
Beers discloses solid-state illumination systems for use in hospitals or
other clinical observation areas. Beers ¶ 1. Beers discloses that the color
characteristics of lamps used in hospitals and clinical settings play a critical
role in providing the necessary visual conditions for color discriminating
based tasks. Id. ¶ 5. In this regard, Beers discloses that in order to achieve
accurate clinical observation of cyanosis, a blue coloration of the skin and
mucous membranes due to the presence of deoxygenated hemoglobin in
blood vessels near the skin surface, lamps having a COI of not more than 3.3
should be used. Id. ¶¶ 3, 9; Reply Br. 5. Beers discloses also that white
light emissions that meet the AS/NZS 1680 standard for hospital lighting
will exhibit a CRI value of greater than about 70, preferably greater than
about 80. Id. ¶ 35. Beers discloses a method for identifying target
chromaticity points, COI value, and CRI value and combining individual
light sources to achieve desired target values. See Beers Fig. 4.
The Examiner does not sufficiently explain why one of ordinary skill
in the art would have applied the COI result effective variable of Beers,
which is used to achieve accurate clinical observation of cyanosis in
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Application 16/270,936

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humans, to the combination of LEDs in Storey, Aikala, and Klase, which
relate to lighting in order to optimize plant growth, and how such
modifications would result in a light emitting apparatus as recited in claim
10. See Appeal Br. 16–17.
In addition, with respect to Dubuc, which the Examiner relied on as
providing further evidence for a higher CRI value in plant applications, as
Appellant points out, Dubuc does not disclose the particular CRI or the CRI
values of the other light sources. Appeal Br. 22; Dubuc ¶ 86. Appellant
contends also that Figure 8 in Dubuc does not contain spectra with sufficient
light intensity. Appeal Br. 22. In this regard, Figure 8 appears to show that
the “Common High CRI white LED” has a more uniform distribution over a
wavelength range, rather than the other light sources shown. Dubuc Fig. 8.
The Examiner does not sufficiently explain how modifying Storey, Aikala,
and Klase in view of Dubuc’s disclosure would result in particular LED
combinations having the melanopic emission spectrum, as well as the CRI
properties for the emitted light, as recited in claim 10.
Accordingly, although the prior art generally discloses LEDs with
peaks at wavelengths in ranges that overlap the ranges recited in claim 10
(see Aikala, claim 1; Dubuc ¶ 7), such is insufficient to establish that an
apparatus resulting from the above discussed disclosures in the prior art as
articulated by the Examiner, would be capable of satisfying all the
requirements recited in claim 10.
As a result, we reverse the Examiner’s decision to reject independent
claim 10 as unpatentable over the prior art cited.
Appeal 2020-004041
Application 16/270,936

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DECISION SUMMARY
Claim(s)
Rejected
35 U.S.C. § Reference(s)/Basis Affirmed Reversed
24 112(a) Written
Description
24
28, 29 112(b) Indefiniteness 28, 29
10–24, 27–
30
103 Storey, Aikala,
Klase, Beers,
Dubuc
10–24, 27–
30
Overall
Outcome
28, 29 10–24, 27,
30

RESPONSE
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)(1)(iv).
AFFIRMED-IN-PART