PHILIPS LIGHTING HOLDING B.V.

Patent Trials and Appeals Board

May 25, 2021

2020001294 (P.T.A.B. May. 25, 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.
15/545,342 07/21/2017 CRISTINA TANASE 2015P00105WOUS 4660
138325 7590 05/25/2021
Signify Holding B.V.
465 Columbus Avenue
Suite 330
Valhalla, NY 10595
EXAMINER
ZHAO, DAQUAN
ART UNIT PAPER NUMBER
2484
NOTIFICATION DATE DELIVERY MODE
05/25/2021 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 CRISTINA TANASE and CORNELIS TEUNISSEN
Appeal 2020-001294
Application 15/545,342
Technology Center 2400
Before ADAM J. PYONIN, MICHAEL J. ENGLE, and
PHILLIP A. BENNETT, Administrative Patent Judges.
ENGLE, Administrative Patent Judge.
DECISION ON APPEAL
STATEMENT OF THE CASE
Appellant1 appeals under 35 U.S.C. § 134(a) from the Examiner’s
rejection of claims 1–6 and 10–23, which are all of the claims pending in the
application. We have jurisdiction under 35 U.S.C. § 6(b).
We AFFIRM IN PART.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies SIGNIFY HOLDING B.V. as the real
party in interest. Appeal Br. 4.
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Application 15/545,342

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TECHNOLOGY
The application relates to “light systems for use in . . . the fish farming
industry” for “counting of sea lice on salmon.” Spec. 1:3–5. “Sea lice are
small marine parasites” that “attach themselves, usually on the skin, fins
and/or gills.” Id. at 1:8–11. “While a few lice on a large salmon may not
cause serious damage, large numbers of lice on that same fish, or just a
couple of lice on a juvenile salmon, can be harmful or fatal.” Id. at 1:11–13.
“Therefore early detection and prevention is essential in order to limit
extensive and costly treatments.” Id. at 2:1–2. The invention relates to
“light sources . . . for improved observation of sea lice on fish skin” that use
“two dominant wavelength peaks, one in the range between 490-540 nm and
one in the range between 620-660 nm.” Id. at 2:27–32. These ranges
correspond roughly with green and red light, respectively. Id. at 8:8–10.
REJECTION
Claims 1–6 and 10–23 are rejected under 35 U.S.C. § 103 as obvious
over Robitaille (US 2013/0273599 A1; Oct. 17, 2013) and Salsbury (US
2008/0106887 A1; May 8, 2008). Final Act. 3.
ISSUES
1. Did the Examiner err in finding the combination of Robitaille
and Salsbury teaches or suggests “illuminating the fish sample with . . . a
first dominant wavelength peak in the range of 490-540 nm and a second
dominant wavelength peak in the range of 620-660 nm,” as recited in claim
12?
2. Did the Examiner err in finding the combination of Robitaille
and Salsbury teaches or suggests “adapting an intensity and/or a colour
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balance of the light output of the light source to the measured environmental
light condition for increasing visual contrast when counting sea lice,” as
recited in claim 1?
3. Did the Examiner err in finding Salsbury teaches or suggests
“the first dominant wavelength peak and the second dominant wavelength
peak are larger than any other wavelength peak within said visible
wavelength range in said light output,” as recited in claims 18 and 21?
ANALYSIS
Claims 12, 16, and 17
Independent claim 12 is reproduced below with the limitations at issue
emphasized:
12. A method of counting sea lice on skin of a fish sample
comprising:
providing a fish sample;
illuminating the fish sample with a light output having a
spectral power distribution within the visible wavelength range
from 380 nm to 780 nm including at least two dominant
wavelength peaks comprising a first dominant wavelength peak
in the range of 490-540 nm and a second dominant wavelength
peak in the range of 620-660 nm; and
counting the sea lice on skin of the fish sample.
For these limitations, the Examiner cites paragraph 74 of Robitaille,
which discloses the following:
the infection of fish populations in cages by parasite or a viral
disease can be monitored using the system if the infection
induces changes in the physical properties of the fish surface
such as changes in pigmentation or texture. For example, in
ocean cage farming settings, sea lice can be a severe issue. When
the sea lice copepods find a fish host, they develop into adult
parasites that attach the fish skin. If sea lice are infecting the fish
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population within the cage, the intensity of green backscattered
light will decrease since the pigmentation of the sea lice
organisms absorbs the green spectrum of light. However, the
pigment characteristic of the sea lice tissues does not absorb as
much light in the red spectrum. Therefore, an unusual decrease
in the green to red backscattered light intensity ratio can be
correlated to a change in fish skin pigmentation caused by sea
lice infection.
Robitaille ¶ 74 (emphasis added); Ans. 4.
The Examiner further finds that Robitaille discloses “two separate
emitter 12, 28 and detector 22, 30 pairs, each corresponding to distinct
wavelength bands and more accurate results can be obtained by using
wavelengths which react more specifically to the organisms.” Ans. 4
(citing Robitaille ¶ 46).
The Examiner also cites to paragraph 35 of Robitaille, which discloses
a system “for obtaining at least an estimation of the quantity of marine
organisms in a water medium” in which “the marine organisms can be
shrimp, . . . lobster larvae, sturgeon eggs, young mussels, micro algae, [or]
Artemia [i.e., brine shrimp], . . . to name a few examples.” Robitaille ¶ 35;
Ans. 4.
The Examiner then determines:
It would have been obvious to one [of] ordinary skill in the art
that green spectrum of light (from the light source emitter) and
red spectrum of light (from the light source emitter) can be used
in estimating the quantity of marine organisms such as [sea] lice
because a more accurate result can be obtained based on the [sea]
lice react more specifically to the green light spectrum and the
red light spectrum.
Ans. 4.
Appellant disagrees. According to Appellant, although Robitaille
discloses “estimating the quantity of . . . fish,” “counting sea lice on skin of
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fish is an entirely different matter than counting the fish themselves.” Reply
Br. 5. “With respect to sea lice, Robitaille merely discloses that the presence
of a sea lice infestation can be detected by measuring a green to red
backscattered light intensity ratio” but “does not disclose . . . the particular
wavelengths claimed . . . can or should be used to count sea lice on skin of a
fish.” Id. at 5–6. More specifically, Appellant argues that “[a]lthough
Robitaille discloses that a reduced backscattered green/red light ratio can be
an indication of lice infestation, Robitaille does not seem to indicate that
different dominant peak wavelengths of light within the green and red bands
are a result-effective variable for purposes of counting sea lice, or that
different skin tones have different optimal dominant peak wavelengths.”
Appeal Br. 9–10. Appellant further argues that “Salsbury is directed to a
random light source and nowhere suggests that it should be employed for the
detection of sea lice” and therefore “one of ordinary skill in the art would
not have selected Salsbury in particular without the benefit of hindsight.”
Id. at 10.
We are not persuaded by Appellant’s arguments. Robitaille discloses
that “sea lice . . . attach [to] the fish skin” and such “changes in
pigmentation” “can be monitored” because “the green to red backscattered
light intensity ratio” is “correlated” with “sea lice infection.” Robitaille
¶ 74. A person of ordinary skill in the art reading Robitaille would have
understood sea lice infection to be a spectrum, not a binary determination,
and therefore monitoring a variable that is correlated with sea lice on fish
skin teaches or suggests “counting the sea lice on skin of the fish sample.”
See Final Act. 4 (citing Robitaille ¶ 53 (“algorithms can link data concerning
light measurements recorded by the system to the variables of interest (VOI)
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such as the number or size of organisms in the water or concentrations
thereof”)).2 Further, we agree with the Examiner that a person of ordinary
skill in the art would have counted the sea lice, in view of the teachings of
the cited art, to determine how “severe [an] issue” the infestation may be.
Robitaille ¶ 74; Ans. 5.
Although Appellant argues that a person of ordinary skill would not
have had the same inventive motive as Appellant, “the law does not require
that the references be combined for the reasons contemplated by the
inventor.” In re Beattie, 974 F.2d 1309, 1312 (Fed. Cir. 1992). “In
determining whether the subject matter of a patent claim is obvious, neither
the particular motivation nor the avowed purpose of the patentee controls.”
KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 419 (2007).
Turning to the specific dominant peak wavelengths in claim 12,
paragraph 74 of Robitaille discloses monitoring the green and red spectrums
of light and paragraph 46 discloses that Robitaille’s system has “two
separate emitter 12, 28 and detector 22, 30 pairs, each corresponding to
distinct wavelength bands” that are “adapted to obtain other information
about the sample, such as turbidity of the water medium.” Though not cited
by the Examiner, we note that paragraph 75 of Robitaille even provides an
example of paragraph 46’s “using two wavelengths of emitted light . . . to
determine the turbidity of the water” that specifically uses “green” and “red”
light. Under Federal Circuit precedent, “[a] reference must be considered
for everything that it teaches.” In re Applied Materials, Inc., 692 F.3d 1289,

2 Separately, although not cited by the Examiner, we note Robitaille further
discloses that measured reflected light values are tantamount to counting an
object of interest in the sample. See, e.g., Robitaille ¶ 17.
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1298 (Fed. Cir. 2012). Here, when read in context with the rest of
Robitaille, we agree with the Examiner that it would have been obvious to a
person of ordinary skill for Robitaille’s monitoring of “the green to red
backscattered light intensity ratio” for sea lice (¶ 74) to be accomplished via
Robitaille’s two emitter and detector pairs (¶ 46) using the specific
wavelengths of green and red light (¶¶ 74–75). Salsbury further confirms
what Robitaille already teaches, i.e., that it was known to use “light-emitting
elements of different colours” at the specific “peak output wavelengths” for
“red” (“610-660 nm”) and “green” (“500-530 nm”) light. E.g., Salsbury
¶ 38. Thus, contrary to Appellant’s argument, the Examiner’s combination
does not rely on improper hindsight.
Accordingly, we sustain the Examiner’s rejection of independent
claim 12 and its dependent claims 16 and 17, which Appellant argues are
patentable for similar reasons. See Appeal Br. 12; 37 C.F.R.
§ 41.37(c)(1)(iv) (2018).
Claims 1–6, 10, 11, and 13
Claim 1 is reproduced below with the limitations at issue emphasized:
1. An apparatus for counting sea lice, comprising at least one
light source for providing a light output with a spectral power
distribution for observation of sea lice on fish skin, where said
spectral power distribution is characterized within the visible
wavelength range from 380 nm to 780 nm by at least two
dominant wavelength peaks, a first dominant wavelength peak in
the range of 490-540 nm and a second dominant wavelength peak
in the range of 620-660 nm,
wherein the apparatus further comprises a sensor for
measuring an environmental light condition and a processor for
adapting an intensity and/or a colour balance of the light output
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of the light source to the measured environmental light condition
for increasing visual contrast when counting sea lice.
Appellant argues that “Robitaille merely discloses that sensor output
is used to detect various aspects, such as turbidity and number of organisms”
and the ratio of “backscattered light” from green and red spectrums, but
“Robitaille does not disclose that an intensity/color balance of light output
provided by a light source is adapted in any way on the basis of a measured
environmental condition.” Appeal Br. 8–9.
We agree with Appellant. The Examiner determines that “[i]t would
have been obvious to one [of] ordinary skill in the art that green . . . and red
. . . can be used in estimating the quantity of marine organisms such as [sea]
lice.” Ans. 3. Thus, the Examiner’s combination would shine green and red
light, then measure the resulting “green to red backscattered light intensity
ratio” which “can be correlated to a change in fish skin pigmentation caused
by sea lice infection.” Robitaille ¶ 74. This teaches or suggests “a sensor
for measuring an environmental light condition,” e.g., measuring the
backscattered light. However, the Examiner’s determination fails to address
how Robitaille teaches or suggests an apparatus comprising “a processor for
adapting an intensity and/or a colour balance of the light output of the light
source to the measured environmental light condition for increasing visual
contrast when counting sea lice.”3 Without more, it appears that the
Examiner’s combination would always shine the same green and red light,

3 We note the Examiner does not rely on Salsbury for the disputed
limitations. See Final Act. 4, 5; MPEP § 1213.02 (“The Board's primary
role is to review the adverse decision as presented by the Examiner, and not
to conduct its own separate examination of the claims.”).
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never adapting intensity or color balance based on the measured backscatter
ratio. The Examiner therefore has not sufficiently addressed this limitation.
Accordingly, we do not sustain the Examiner’s rejection of claim 1,
and its dependent claims 2–6, 10, 11, and 13–15.
Claims 18–21
Claims 18 and 21 each recite “the first dominant wavelength peak and
the second dominant wavelength peak are larger than any other wavelength
peak within said visible wavelength range in said light output.” As above,
these two peaks must be at 490–540 nm and 620–660 nm. Claims 19, 20,
22, and 23 depend from either claim 18 or 21.
For this limitation, the Examiner relies on Figures 1 through 3 of
Salisbury. Ans. 5–7. However, we agree with Appellant that all three of
those figures show a third peak at ~450 nm that is larger than at least the
peak ~525 nm. See Reply Br. 7–8.
Accordingly, we do not sustain the Examiner’s rejection of claims 18–
21.
OUTCOME
The following table summarizes the outcome of the rejection:
Claim(s)
Rejected 35 U.S.C. § Reference(s)/Basis Affirmed Reversed
1–6, 10–23 103 Robitaille, Salsbury 12, 16, 17 1–6, 10, 11,
13–15, 18–23
No time for taking subsequent action in connection with this appeal
may be extended under 37 C.F.R. § 1.136(a). See 37 C.F.R. § 1.36(a)(1)(iv).
AFFIRMED IN PART