Ex Parte Holland

Patent Trial and Appeal Board

May 28, 2013

11365110 (P.T.A.B. May. 28, 2013)

UNITED STATES PATENT AND TRADEMARK OFFICE
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BEFORE THE PATENT TRIAL AND APPEAL BOARD
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Ex parte KYLE HOLLAND
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Appeal 2010-011145
Application 11/365,110
Technology Center 2800
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Before JASON V. MORGAN, HUNG H. BUI, and
LYNNE E. PETTIGREW, Administrative Patent Judges.

PETTIGREW, Administrative Patent Judge.

DECISION ON APPEAL
This is an appeal under 35 U.S.C. § 134(a) from a final rejection of
claims 1-8. We have jurisdiction under 35 U.S.C. § 6(b).
We affirm.
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STATEMENT OF THE CASE
Introduction
According to Appellant, the invention relates to an apparatus for
remotely sensing and assessing plant chlorophyll content, thereby allowing
selective monitoring or treatment of individual plants. Abstract.
Claim 1 is independent and is illustrative of the invention (emphasis
added):
1. Apparatus for assessing the status of a plant
forming a part of a plant canopy under ambient sunlight
conditions, comprising:
(a) a light source positioned above the plant canopy and
having an emission spectrum with a portion of its spectrum
containing red-edge wavelengths from 700 nm to 735 nm for
illuminating the plant canopy;
(b) a detector for detecting portions of the light from the
light source reflected off of a plant in the plant canopy; and
(c) a processor for determining the plant's status based in
part on the red-edge wavelengths emitted by the source.
Prior Art Relied Upon
The Examiner relies upon the following prior art in rejecting the
claims:
Beck US 5,389,781 Feb. 14, 1995
Lussier US 7,112,806 B2 Sept. 26, 2006
Schlemmer et al., Remotely Measuring Chlorophyll Content in Corn Leaves
with Different Nitrogen Levels and Relative Water Content (received for
publication May 11, 2004) (“Schlemmer”).
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Rejections on Appeal
The Examiner has rejected claims 1, 3, 4, and 8 under 35 U.S.C.
§ 102(a) as being anticipated by Lussier. Ans. 3-4.
The Examiner has rejected claim 2 as being unpatentable under 35
U.S.C. § 103(a) over Lussier and Schlemmer. Ans. 4-5.
The Examiner has rejected claims 5-7 as being unpatentable under 35
U.S.C. § 103(a) over Lussier and Beck. Ans. 5-6.
ANALYSIS
Claims 1-4 and 8
Appellant contends that the Examiner erred in rejecting claim 1
because Lussier does not disclose a system that operates “under ambient
light conditions” while also satisfying limitation (a) in the body of the claim.
App. Br. 4-5; Reply Br. 13-14. Acknowledging that “under ambient light
conditions” appears only in the preamble of the claim, Appellant
nevertheless argues that the recited language should be given patentable
weight because it “is needed to give life and meaning to the claim.” App.
Br. 6. Appellant specifically points to limitation (b), which recites “a
detector for detecting portions of the light from the light source reflected off
of a plant in the plant canopy.” Id. According to Appellant, the “claim
language is thus distinguishing the light detected in the detector from
ambient or reflected sunlight.” Id.
We are not persuaded by Appellant’s arguments. First, we agree with
the Examiner that the preamble phrase “under ambient sunlight conditions”
should not be given patentable weight, and we adopt as our own the
Examiner’s findings and reasoning in that regard. As the Examiner correctly
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finds, “under ambient sunlight conditions” merely recites the intended use of
the apparatus in claim 1. Ans. 8; see Pitney Bowes, Inc. v. Hewlett-Packard
Co., 182 F.3d 1298, 1305 (Fed. Cir. 1999). As also stated by the Examiner,
the body of the claim describes a structurally complete invention. Ans. 8;
see Pitney-Bowes, 182 F.3d at 1305. Furthermore, “under ambient sunlight
conditions” does not provide antecedent basis for any limitation in the claim
body and, contrary to Appellant’s argument, is not essential to understanding
the recitation in limitation (b) of detecting light from the light source
reflected off of a plant. See Catalina Mktg. Int’l, Inc. v. Coolsavings.com,
Inc., 289 F.3d 801, 808 (Fed. Cir. 2002). Thus, we agree with the Examiner
that “under ambient light conditions” is not a claim limitation entitled to
patentable weight. Ans. 8.
Moreover, even if the recited language is considered a limitation, we
concur with the Examiner’s finding that Lussier discloses a system that
assesses the status of a plant under ambient sunlight conditions while also
meeting the remaining limitations of claim 1. See Ans. 7. As found by the
Examiner, Lussier describes a system with “day-night operation.” Ans. 7;
Lussier, col. 5, ll. 8-9; col. 7, ll. 44-45; col. 8, ll. 50-58. Although the
system in Lussier includes a box placed over the plant (item (1) in Figure 1),
the system itself operates under ambient sunlight conditions during daytime
operation. The Examiner has broadly but reasonably interpreted the claim
language to encompass such a system.
We also concur with the Examiner’s findings that the system
described in Lussier that operates under ambient sunlight conditions also
satisfies the other limitations of claim 1. Contrary to Appellant’s argument
that during daytime operation the active light source in Lussier’s system is
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filtered for visible light in the 400-650 nm spectral band, App. Br. 5 (citing
Lussier, col. 5, ll. 8-10), the Examiner correctly finds that Lussier also
teaches other ranges for the light source depending on the operation
required, including 650-1100 nm, which “contain[s] red-edge wavelengths
from 700 nm to 735 nm,” as recited in claim 1. Ans. 7; Lussier, col. 7, ll.
29-33. As shown in Figure 1 of Lussier (item (4)), this light source is also
“positioned above the plant canopy” as recited in claim 1. Ans. 9.
Appellant’s contention that the light source is directed toward either side of
a single leaf of a plant instead of positioned above the plant canopy (App.
Br. 5) refers to an alternative embodiment and does not preclude anticipation
by the configuration shown in Figure 1 of Lussier. Ans. 9.
In the Reply Brief, Appellant argues for the first time that Lussier’s
system measures fluorescence rather than reflectance of light from a plant.
Reply Br. 4-11. Because this argument could have been presented in the
Appeal Brief to rebut the rejection made in the Final Office Action, it is
untimely and therefore waived. See Ex parte Borden, 93 USPQ2d 1473,
1474 (BPAI 2010) (informative) (“[T]he reply brief [is not] an opportunity
to make arguments that could have been made in the principal brief on
appeal to rebut the Examiner’s rejections, but were not.”). Moreover,
Appellant’s new argument is unpersuasive because Lussier describes
detecting both fluorescence and reflectance. The Examiner finds that video
imager (8) and video image sensor area array (12) in Lussier’s Figure 1
satisfy limitation (b) of claim 1, which recites “a detector for detecting
portions of the light from the light source reflected off of a plant in the plant
canopy.” Ans. 3-4. In addition to detecting fluorescence, video imager (8)
may also detect reflectance of light from the plant. See, e.g., Lussier, col. 7,
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ll. 45-48 (“A second lens can be used to enable a second narrow-spectral
band, 740 nm, and/or integrates a photo-diode array with interference filters
to capture additional reflective VIS/NIR narrow band signatures.” (emphasis
added)); Lussier, col. 7, ll. 59-62 (“A lens/photo-diode assembly with photo
cells, filter (15) may replace lens 11 to measure reflective narrow-band
VIS/NIR signatures to improve the diagnostic evaluation of the plant stress
response.” (emphasis added)).
For these reasons, we sustain the Examiner’s rejection of independent
claim 1 and dependent claims 2-4 and 8, for which Appellant has not
presented separate, detailed arguments. See App. Br. 7-8.
Claims 5-7
Appellant also presents new arguments in the Reply Brief regarding
the Examiner’s rejection of dependent claims 5-7 under 35 U.S.C. § 103(a)
over Lussier and Beck. Reply Br. 12-13. Specifically, Appellant argues that
one skilled in the art would have no way to modify Lussier to practically
generate a map (claim 5) or take a reading and then apply a horticultural
material (claims 6 and 7) as taught by Beck because Lussier’s system is
meant to be stationary, and therefore there would be a time delay in
performing multiple measurements. Id. These arguments could have been
presented in the Appeal Brief, but were not, and are therefore waived. See
Borden, 93 USPQ2d at 1473-74. Moreover, Appellant’s arguments are
unpersuasive because the Examiner’s rejection is based on the combined
teachings of the references, not physically modifying Lussier’s system to
incorporate the mobile aspect of Beck’s system. See In re Keller, 642 F.2d
413, 425 (CCPA 1981) (“The test for obviousness is not whether the features
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of a secondary reference may be bodily incorporated into the structure of the
primary reference . . . Rather, the test is what the combined teachings of the
references would have suggested to those of ordinary skill in the art.”
(citations omitted)).
Appellant otherwise argues the patentability of claims 5-7 for the
same reasons presented with respect to claim 1. App. Br. 8. Accordingly,
for the reasons discussed above with respect to claim 1, we sustain the
Examiner’s rejection of claims 5-7.
DECISION
The Examiner’s rejection of claims 1-8 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).
AFFIRMED

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