Ex Parte Ishibashi et al

Patent Trial and Appeal Board

Feb 9, 2016

11795696 (P.T.A.B. Feb. 9, 2016)

UNITED STA TES p A TENT AND TRADEMARK OFFICE
APPLICATION NO. FILING DATE
111795,696 11120/2007
513 7590 02/11/2016
WENDEROTH, LIND & PONACK, LLP,
1030 15th Street, N.W.,
Suite 400 East
Washington, DC 20005-1503
FIRST NAMED INVENTOR
Yasunori Ishibashi
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
ATTORNEY DOCKET NO. CONFIRMATION NO.
2007_1124A 6298
EXAMINER
BER ONA, KIMBERLY SUE
ART UNIT PAPER NUMBER
3696
NOTIFICATION DATE DELIVERY MODE
02/11/2016 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):
ddalecki@wenderoth.com
eoa@wenderoth.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
BEFORE THE PATENT TRIAL AND APPEAL BOARD
Ex parte Y ASUNORI ISHIBASHI, SHIGERU MIY AS HIT A,
YOSHIFUMI SAWADA, TOKIHIKO OKADA, and MICHIO KURATA
Appeal2013-007298
Application 11/795,6961
Technology Center 3600
Before MICHAEL C. ASTORINO, PHILIP J. HOFFMANN, and
BRUCE T. WIEDER, Administrative Patent Judges.
ASTORINO, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
The Appellants appeal under 35 U.S.C. § 134 from the Examiner's
decision rejecting claims 1 and 11. We have jurisdiction over the appeal
under 35 U.S.C. § 6(b).
We REVERSE.
1 According to the Appellants, the real party in interest is "KINKI
UNIVERSITY." Br. 2.
Appeal2013-007298
Application 11/795,696
CLAIMED SUBJECT MATTER
Claims 1 and 11 are the independent claims on appeal. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A method for preventing the occurrence of fright behavior or
collision death of tuna in juvenile or young adult fish stage
during rearing, storage or transportation which comprises
rearing, storing or transporting the tuna in juvenile or young adult
fish stage in a visual stimulus-alleviating environment, wherein
the alleviation of visual stimuli is conducted by controlling the
fluctuation in illumination of the environment, wherein the
illumination of the environment is maintained at least about
150 lx.
REJECTION
Claims 1 and 11 are rejected under 35 U.S.C. § 103(a) as unpatentable
over Shigeru Miyashita et al., Mortality of Northern Bluefin Tuna Thunnus
Thynnus Due to Trauma Caused by Collision During Growout Culture, in
31/4 J. WORLD AQUACULTURE Soc'y 632, 634, 638 (2000) [hereinafter
"Miyashita"]. 2
ANALYSIS
Miyashita describes an experiment in which the use of "all-night
lighting" was considered effective in preventing collisions of tuna in a tank.
See Miyashita 634, col. 1, 11. 10-13, 638, col. 1, 11. 23-28.
The Examiner finds that Miyashita does not teach that "the
illumination of the environment is maintained at least about 150 lx," as
2 The Examiner has withdrawn the rejection of claims 1 and 11 under
35 U.S.C. § 102(b) as anticipated by Miyashita. Final Act. 2, mailed
May 7, 2012. The failure of the Examiner to remove all statements
concerning the withdrawn rejection is a minor oversight. See id. at 3.
2
Appeal2013-007298
Application 11/795,696
recited in claims 1 and 11. See Final Act. 4. The Examiner, however,
concludes that it would have been obvious to maintain the illumination at
least about 150 lx "since it has been held that discovering an optimum value
of a result effective variable involves only routine skill in the art." Id.
(citing In re Boesch, 617 F.2d 272 (CCPA 1980)). According to the
Examiner, the degree of illumination ofMiyashita's all-night lighting is a
result effective variable, and arriving at an optimum value of illumination
would have been a matter of routine experimentation. See Ans. 4--5.
The Appellants contend that the Examiner fails to establish that
illumination is a result-effective variable that may be optimized through
routine experimentation to arrive at an illumination of the environment being
maintained at least about 150 lx, as required by claims 1 and 11. See Br. 10.
The Appellants assert that Miyashita discloses all-night lighting having an
illumination of 2.2 lx. See id. at 9, 10. The Appellants' contention is
persuasive.
Even ifthe prior art recognized the degree of illumination as a result-
effective variable, discovery of an optimum or workable range must be a
matter of routine experimentation for a person of ordinary skill in the art.
See In re Aller, 220 F.2d 454, 456 (CCPA 1955).
In response to the Appellants' contention, the Examiner finds that
Miyashita is silent regarding the specific conditions of illumination intensity.
See Ans. 5. Moreover, according to the Examiner, the Appellants' assertion
that the illumination of Miyashita's all-night lighting is 2.2 lx relies on an
inaccurate surface area value and improperly fails to consider specifications
of the light bulb that are not disclosed by Miyashita. See id. at 3--4. The
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Appeal2013-007298
Application 11/795,696
Examiner does not establish on the record a calculation for the level of
illumination of the environment of Miyashita' s experiment.
The Examiner, however, determines that finding an optimized degree
of illumination is a matter of routine skill in the art. See id. at 5. To that
end, the Examiner reasons that changing the wattage of a light bulb or
increasing the level on a dimmer switch for a light bulb would have been
within routine skill in the art. See id. Although changing the wattage of a
light bulb and increasing the level of a dimmer switch for a light bulb can
change the illumination of a light bulb, such fails to explain how doing so
would compare to the level of illumination of the environment being
maintained at least about 150 lx, as required by claims 1 and 11. Because
the Examiner fails to establish on the record the level of illumination of the
environment of Miyashita' s experiment, it appears that only through
speculation would a person of ordinary skill in the art have been able to
discover the claimed illumination as a matter of routine experimentation.
Based on the foregoing, the Examiner has not provided a reason with
rational underpinning to support the conclusion of obviousness. Thus, the
Examiner's rejection of claims 1 and 11 as unpatentable over Miyashita is
not sustained.
DECISION
We REVERSE the Examiner's decision rejecting claims 1and11.
REVERSED
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