Ex Parte Blake

Patent Trial and Appeal Board

Dec 31, 2013

11767562 (P.T.A.B. Dec. 31, 2013)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
11/767,562 06/25/2007 Alan Blake YORK-104 1603
23410 7590 12/31/2013
Vista IP Law Group LLP
2040 MAIN STREET, Suite 710
IRVINE, CA 92614
EXAMINER
HAN, JASON
ART UNIT PAPER NUMBER
2875
MAIL DATE DELIVERY MODE
12/31/2013 PAPER
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.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________

Ex parte ALAN BLAKE
____________

Appeal 2011-008581
Application 11/767,562
Technology Center 2800
____________

Before BRADLEY R. GARRIS, JEFFREY T. SMITH, and
GEORGE C. BEST, Administrative Patent Judges.

GARRIS, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-008581
Application 11/767,562

2
Appellant appeals under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1-7, 9-14, 16, 17, 25-29, 31, and 32. We have
jurisdiction under 35 U.S.C. § 6.
We REVERSE.
Appellant claims an aquarium for displaying a florescent fish
comprising: an aquatic tank 12; a florescent fish 40;
a first light source [32] configured to emit light at a
wavelength spectrum having a maximum peak emission
wavelength which enhances the display of said florescent fish
within said tank under a dark external lighting condition; [and]
a second light source [36] configured to emit light at a
second wavelength spectrum having a second maximum peak
emission wavelength different from said first maximum peak
emission wavelength which enhances the display of said
florescent fish within said tank under a bright external lighting
condition

(independent claim 1, Figs. 1 and 3). Appellant also claims a similar
aquarium comprising
a plurality of light sources of different wavelengths, said
light sources configured to allow for certain of said plurality of
light sources to be activated for selection of a lighting
combination which creates a viewing ratio of at least 75% of a
maximum viewing ratio of said living, transgenic, fish under at
least two ambient lighting conditions, including a bright
external lighting condition and a dark external lighting
condition

(independent claims 10 and 25).

A copy of representative claims 1 and 10, taken from the Claims
Appendix of the Appeal Brief, appears below.
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Application 11/767,562

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1. An aquarium for displaying a fluorescent fish under an
external lighting condition, the term "fluorescent" as used
herein means the emission of light at an emission wavelength
resulting from the absorption of an excitation light at an
excitation wavelength lower than the emission wavelength, the
aquarium comprising:
an aquatic tank;
a living, transgenic, fish, said fish or its progenitors
having been genetically engineered such that its genome
incorporates at least one exogenous fluorescent protein gene;
a first light source configured to emit light at a first
wavelength spectrum having a first maximum peak emission
wavelength which enhances the display of said fluorescent fish
within said tank under a dark external lighting condition;
a second light source configured to emit light at a second
wavelength spectrum having a second maximum peak emission
wavelength different from said first maximum peak emission
wavelength which enhances the display of said fluorescent fish
within said tank under a bright external lighting condition; and
at least one electronic control for controlling the
operation of said first and second light sources such that the
first and second light sources may be selectively turned on/off.

10. An aquarium for displaying a fluorescent fish under
an external lighting condition, the term "fluorescent" as used
herein means the emission of light at an emission wavelength
resulting from the absorption of an excitation light at an
excitation wavelength lower than the emission wavelength, the
aquarium comprising:
an aquatic tank;
a living, transgenic, fish, said fish or its progenitors
having been genetically engineered such that its genome
incorporates at least one exogenous fluorescent protein gene;
a plurality of light sources of different wavelengths, said
light sources configured to allow for certain of said plurality of
light sources to be activated for selection of a lighting
combination which creates a viewing ratio of at least 75% of a
maximum viewing ratio of said living, transgenic, fish under at
Appeal 2011-008581
Application 11/767,562

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least two ambient lighting conditions, including a bright
external lighting condition and a dark external lighting
condition; and
at least one electronic controller for controlling the
operation of said light sources such that the optimal lighting
combination may be selected.

The Examiner rejects independent claim 1 and dependent claims 2-7
and 9 under 35 U.S.C. § 102(b) as anticipated by Blake (US 2005/0034677
A1 published Feb. 17, 2005).
Under 35 U.S.C. § 103(a), the Examiner rejects independent claims 10
and 25 as unpatentable over Blake and rejects the remaining dependent
claims on appeal as unpatentable over Blake alone or in combination with
another prior art reference.
We will not sustain the Examiner's rejections for the reasons given by
Appellant in the Appeal Brief (App. Br. 8-14). The following comments are
added for emphasis.
Concerning the § 102 rejection of independent claim 1, Appellant is
correct that Blake contains no express or inherent teaching of first and
second light sources which are configured to perform the functions defined
by claim 1 (Br. 10).
It is well settled that an apparatus claim containing a functional
limitation may be inherently anticipated by a prior art apparatus which
necessarily possesses the capability of performing the claimed function. See
Leggett & Platt, Inc. v. VUTEk, Inc., 537 F.3d 1349, 1354 (Fed. Cir. 2008).
The Examiner finds that the Blake aquarium may comprise multiple
light sources wherein the lights may emit different wavelengths (Ans. 15).
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Application 11/767,562

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However, the Examiner provides this record with no finding that Blake's
multiple light sources are capable of performing the claim 1 function
to emit light . . . having a first . . . wavelength which enhances
the display of said florescent fish within said tank under a dark
external lighting condition . . . [and] to emit light . . . having a
second . . . wavelength different from said first . . . wavelength
which enhances the display . . . under a bright external lighting.

For this reason, the Examiner has failed to establish that claim 1 is
anticipated by Blake.
The deficiency of the Examiner's finding regarding Blake is repeated
in the § 103 rejection of independent claims 10 and 25 (see, e.g., Ans. 6).
Further, this deficiency is compounded by the Examiner's conclusion that it
would have been obvious
to have configured the light sources [of Blake] to . . . create[] a
viewing ratio of at least 75% of a maximum viewing ratio under
at least two ambient lighting conditions, including a bright and
a dark external lighting condition, [as claimed] since it has been
held that where the general conditions of a claim are disclosed
in the prior art, discovering the optimum or workable ranges
involves only routine skill in the art

(id. at 7). As correctly argued by Appellant, "Blake . . . does not disclose the
general conditions to be optimized . . . [and] is absolutely silent as to
configuring the light sources for different ambient lighting conditions" (App.
Br. 13).
In short, the Examiner's obviousness conclusion based on
optimization is contrary to by the well-established legal principle that it
would not have been obvious to optimize a parameter which was not
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Application 11/767,562

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recognized to be a result-effective variable in the prior art. See In re
Antonie, 559 F2d 618, 620 (CCPA 1977).

The decision of the Examiner is reversed.

REVERSED

kmm