Wisconsin Alumni Research Foundation

Patent Trials and Appeals Board

Sep 22, 2021

2021002060 (P.T.A.B. Sep. 22, 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.
15/202,294 07/05/2016 Terence P. Barry 282.197 8710
72088 7590 09/22/2021
WISCONSIN ALUMNI RESEARCH FOUNDATION
C/O BOYLE FREDRICKSON S.C
840 North Plankinton Avenue
Milwaukee, WI 53203
EXAMINER
NGUYEN, SON T
ART UNIT PAPER NUMBER
3643
NOTIFICATION DATE DELIVERY MODE
09/22/2021 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):
docketing@boylefred.com
PTOL-90A (Rev. 04/07)
UNITED STATES PATENT AND TRADEMARK OFFICE
____________________

BEFORE THE PATENT TRIAL AND APPEAL BOARD
____________________

Ex parte TERENCE P. BARRY
____________

Appeal 2021-002060
Application 15/202,294
Technology Center 3600
____________

Before DANIEL S. SONG, EDWARD A. BROWN, and
WILLIAM A. CAPP, Administrative Patent Judges.

CAPP, Administrative Patent Judge.

DECISION ON APPEAL

STATEMENT OF THE CASE
Appellant1 seeks our review under 35 U.S.C. § 134(a) of the final
rejection of claims 1, 2, 4–11, 13–16, 18–25, and 27. We have jurisdiction
under 35 U.S.C. § 6(b).
We REVERSE.

1 We use the word “Appellant” to refer to “applicant” as defined in 37
C.F.R. § 1.42(a). Appellant identifies Wisconsin Alumni Research
Foundation as the applicant and real party in interest. Appeal Br. 3.
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THE INVENTION
Appellant’s invention relates to feeding larval fish. Spec. 1. Claim 1,
reproduced below, is illustrative of the subject matter on appeal.
1. A device for enhancing the feeding response of larval
fish to feedstock, the larval fish receivable in a tank having
water therein defining a water surface, comprising:
a food distribution mechanism vertical spaced from the
water surface adjacent the tank and adapted for receiving the
feedstock therein, the food distribution mechanism configured
to selectively deposit portions of the feedstock into the tank;
a light source vertically spaced from the water surface
adjacent the tank;
a laser beam generated by the light source, the laser beam
projecting along an axis in a first direction toward the water
surface;
a controller operatively connected to the food distribution
mechanism and the light source, the controller configured to:
actuate the food distribution mechanism for a time
period at selected intervals such that the food distribution
mechanism deposits a portion of the feedstock into the tank
during each time period; and
actuate the light source at one of the actuation of the
food distribution mechanism and a selected time delay after
actuation of the food distribution mechanism for at least a
portion of each time period; and
a diffuser positioned along the axis between the light source
and the tank and being adapted for receiving the laser beam, the
diffuser being configured to diffuse the laser beam into a
diffuse beam with a desired pattern for illuminating the portions
of feedstock in the tank;
wherein the laser beam is collimated and coherent.
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THE REJECTIONS
The Examiner relies upon the following as evidence in support of the
rejections:
NAME REFERENCE DATE
Patrick US 6,203,170 B1 Mar. 20, 2001
Blake US 2008/0316732 A1 Dec. 25, 2008
Peterson US 2016/0030609 A1 Feb. 4, 2016
The following rejections are before us for review:
1. Claims 1, 2, 4–11, 13–16, 18–25, and 27 are rejected under 35
U.S.C. 112(a) for failure to comply with the written description requirement.
2. Claims 1, 2, 4–11, 13–16, 18–25, and 27 are rejected under 35
U.S.C. 112(b) as indefinite for failure to particularly point out and distinctly
claim the subject matter which the inventor regards as the invention.
3. Claims 1, 4–11, 14–16, 18–25, and 27 are rejected under 35 U.S.C.
§ 103 as being unpatentable over Patrick and Peterson.
4. Claims 2 and 13 are rejected under 35 U.S.C. § 103 as being
unpatentable over Patrick, Peterson, and Blake.
OPINION
Indefiniteness
We analyze the Examiner’s Section 112 indefiniteness rejection
before proceeding to the Section 112 written description rejection. See Ex
parte Moore, 439 F.2d 1232, 1235 (CCPA 1971) (explaining that
definiteness should be determined before conducting an analysis under the
written description requirement).
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Claims 1 and 10
The Examiner considers unclear the limitations in claims 1 and 10
directed to the food distribution mechanism and the light source being
vertically spaced from the water surface. Final Act. 3.
Appellant explains that claims 1 and 10 recite a device that feeds
larval fish disposed in a tank filled with water. Appeal Br. 9. The water in
the tank defines an upper surface as recited in the preamble of each of
claims 1 and 10. Id., Claims App. According to Appellant, vertically
spaced from the water surface merely indicates the disposition of the food
device in relation to the water surface recited in the preamble. Id.
In response, the Examiner states that the “water surface” is not
“positively claimed.” Ans. 5. According to the Examiner, such renders the
meaning of the claim unclear. Id.
The test for definiteness under 35 U.S.C. § 112, is “whether those
skilled in the art would understand what is claimed when the claim is read in
light of the specification.” Orthokinetics, Inc. v. Safety Travel Chairs,
Inc., 806 F.2d 1565, 1576 (Fed. Cir. 1986) (citations omitted). In our
opinion, a skilled artisan would have no difficulty in understanding claims 1
and 10 when read in light of Appellant’s Specification.
We do not sustain the Examiner’s Section 112 rejections of
independent claims 1 and 10. The claims that depend therefrom stand.
Claim 19
The Examiner considers that the claim term “along the axis” in
claim 19 renders that claim indefinite. Final Act. 2. For reasons discussed
more fully under the written description section of this decision hereinbelow,
we find no merit in the Examiner’s Section 112 indefiniteness rejection of
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5
claim 19. Thus, we do not sustain that rejection of claim 19 and the claims
that depend therefrom stand.
Written Description
The Examiner takes the position that the “along an axis” limitations in
independent claims 1, 10, and 19, lack written description support in
Appellant’s disclosure. Final Act. 2–3. In particular, the Examiner states
that diffuser 74 appears to be positioned horizontally from the axis of the
laser beam which, at least to the Examiner, does not comport with a common
English language dictionary definition of “along.” Id. at 3. The remaining
claims are rejected based on their dependency. Id. at 3.
Appellant argues that “along an axis” in claim 1 is associated with the
surrounding language of “laser beam projecting” and “in a first direction.”
Appeal Br. 7.
[T]he independent claims define a laser beam projecting along
an axis in a first direction toward the water surface. The
function of a laser is to emit photons that are coherent, and
therefore all travelling in the same direction. Hence, by
referring to reference numeral 70 as a laser beam, the
Specification clearly discloses all inherent properties of such
claim element, including the fact that a laser beam: 1) travels
along an axis; 2) is collimated; and 3) is coherent.
Id.
In response, the Examiner states that the word “axis” does not appear
in Appellant’s Specification. Ans. 3. The Examiner also states the “axis”
limitation is not clear from just viewing Figure 1 of Appellant’s disclosure.
Id. at 4.
The specification of a patent as filed must “contain a written
description of the invention.” 35 U.S.C. § 112. A specification has an
adequate written description when it “reasonably conveys to those skilled in
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the art that the inventor had possession of the claimed subject matter as of
the filing date” of the patent. Ariad Pharm., Inc. v. Eli Lilly & Co., 598
F.3d 1336, 1351 (Fed. Cir. 2010) (en banc). “[T]he test requires an
objective inquiry into the four corners of the specification from the
perspective of a person of ordinary skill in the art. . . . [to] show that the
inventor actually invented the invention claimed.” Id.
We do not share the Examiner’s concern that the word “axis” does not
appear in the Specification. It is settled law that the claimed invention does
not have to be described in ipsis verbis in the specification to satisfy the
written description requirement. See Union Oil Co. of Cal. v. Atl. Richfield
Co., 208 F.3d 989, 1000 (Fed. Cir. 2000).
Appellant’s Specification mentions the word “laser beam” more than
thirty times. Spec. 2–4, 8–10, 12, 14, 15. A person of ordinary skill in the
art who is familiar with laser beams would understand that a laser beam
projects light in a substantially linear manner. A person of ordinary skill in
the art would also have no difficulty in associating such a linear beam of
light with the word “axis.”
The Examiner’s application of the dictionary definition of “along” in
relation to the “diffuser positioned along the axis between the light source
and the tank and being adapted for receiving the laser beam” is overly
restrictive. A person of ordinary skill in the art would understand that the
diffuser could be disposed in a manner that intersects the laser beam
relatively closer to the light source or relatively more distant from the light
source and that such relative disposition near or far would be somewhere
“along” the beam of light. The full dictionary definition from the source
relied on by the Examiner in the final rejection is reproduced below.
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1. through, on, beside, over, or parallel to the length or
direction of; from one end to the other of: to walk along a
highway; to run a border along a shelf.
2. during; in the course of: Somewhere along the way I lost my
hat.
www.dictionary.com (accessed Sept. 15, 2021). Apparently, the Examiner
neglected to look at definition number 2 recited in the dictionary.
Appellant’s use of “along” fully comports with the second listed definition,
as in – “somewhere along the laser beam a diffuser is positioned.” Id.
Claims App.
We do not sustain the Examiner’s Section 112 written description
rejection of claims 1, 2, 4–11, 13–16, 18–25, and 27.
Unpatentability of Claims 1, 4–11, 14–16, 18–25, and 27
over Patrick and Peterson
Claim 1
The Examiner finds that Patrick discloses the invention substantially
as claimed except for water being disposed in a tank and the light beam
being a laser beam that passes through a diffuser, for which the Examiner
relies on Peterson. Final Act. 4–6. The Examiner concludes that it would
have been obvious to a person of ordinary skill in the art at the time the
invention was made to feed fish in a water tank and to use diffused laser
light instead of LED light. Id. at 6. According to the Examiner, using
diffused laser light instead of LED light amounts to a simple substitution of
one known element for another with predictable results. Id. at 6–7. The
Examiner further finds that using diffused laser light would have been
obvious to provide light efficiency. Id. at 7.
Appellant argues that laser and LED lights, contrary to the Examiner’s
position, are not functionally equivalent. Appeal Br. 10–11.
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The light produced by a LED is much more scattered than the
light produced by a laser and creates a large circle. As such, by
utilizing an array of visible light emitting diodes, the light
source in the Patrick et al., ’170 patent emits light in all
directions from a common point in the hopes of attracting/
repelling fish to a desired location within a body of water. In
contrast, the device of claim 1 contemplates utilizing a diffuser
positioned between a source of a laser beam and a tank to
generate a diffused beam with a homogenized intensity and a
desired pattern for illuminating the portions of feedstock
deposited in the tank.
Id. at 11.
By emitting light in all directions from a common point
underneath the water, fish in all directions from the common
point may be attracted/repelled by the light. In contrast,
utilizing a laser beam/ diffuser combination located outside the
water would result in a diffuse beam emitted from the diffuser
in a pattern into the water. Again, such an arrangement would
not emit light in all directions from a common point within the
body of water. As a result, the device would be unable to
attract/repel fish outside of the pattern to the desired location
within the body of water.
Id. Appellant further notes differences between the timing of light actuation
in Patrick versus the instant invention. Id. at 12.
Arguing further, Appellant points out that Peterson’s light is used for
environmental decontamination. Final Act. 13. Appellant argues that a
person of ordinary skill in the art would not look to an environmental
decontamination device to enhance the feeding response of larval fish. Id.
In response, the Examiner accuses Appellant of individually attacking
the references in a combination rejection. Ans. 5–6. The Examiner further
comments that that interposing a diffuser in a laser beam merely entails a
rearranging of parts. Ans. 6 (citing In re Japikse, 181 F.2d 1019
(CCPA 1950)). The Examiner further observes that Peterson teaches that
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one can use either LEDs or lasers and uses such observation to support the
position that LEDs and lasers are functional equivalents. Id. at 7.
Patrick is directed to a device for either attracting or repelling fish.
Patrick, Abstract. In applications where it is desired to attract fish, Patrick
emits short wavelengths of light. Id. col. 3, ll. 35–42. In applications where
it is desired to repel fish, Patrick emits long wavelengths of light. Id. col. 4,
ll. 1–6. Patrick’s light emitter is submerged beneath the surface of water.
Id. col. 2, ll. 57–67. Patrick uses LEDs as its light emitter. Id. col. 3,
ll. 9–34. Patrick emits light on a predetermined schedule to condition fish to
approach the light emitter which is disposed proximate a feeding station.
[C]ontroller 90 causes device 10 to be illuminated for periods
of about 30 seconds, these periods of illumination being
separated by intervals of about 4 hours. During the periods of
illumination, controller 90 causes a predetermined amount of
food 94 to be dispensed from food dispenser 92 over a period of
about 2 seconds . . . The fish 86 become conditioned to respond
to the light emitted by device 10 and swim to the feeding
station 88 to accept food 94.
Id. col. 6, ll. 32–39. Thus, using light as a stimulus for operative
conditioning encourages feeding in an aquaculture environment. Id.
Peterson is directed to a light fixture that emits light at wavelengths
conducive to disinfecting an environment so as to reduce or eliminate
bacterial or viral contamination. Peterson ¶ 2. Peterson considers a variety
of light sources as acceptable for its decontamination process, including
LED, phosphor conversion, quantum dots, and lasers. Id. ¶ 56.
Having reviewed the teachings of Patrick and Peterson, we are unable
to agree with the Examiner that a person of ordinary skill in the art would
have combined their respective teachings in a manner as proposed by the
Examiner. The mere fact that the prior art may be modified in the manner
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suggested by the Examiner does not necessarily make the modification
obvious. In re Fritch, 972 F.2d 1260, 1266 (Fed. Cir. 1992).
Patrick and the instant invention operate their respective light sources
on different schedules and we are not persuaded that, just because a
controller is capable of being configured, it is, therefore, obvious to
configure the controller to cause light to be emitted at the claimed schedule,
which differs from anything taught or suggested by the prior art. Patrick
illuminates its LED light briefly under an operative conditioning schedule to
attract fish to feed. Patrick, col. 6, ll. 32–39. In contrast, Appellant uses
diffuse laser light to illuminate feedstock in the tank.
Upon actuation of food distribution mechanism 56 or after a
selected delay, controller 66 actuates light source 68 in
accordance with the user’s instructions such that laser beam
generator 69 of light source 68 emits laser beam 70. Laser
beam 70 passes through diffuser 74 such that diffuser 74
expands laser beam 70 into a well-defined, predetermined
pattern of diffused light 76 directed to water 19 within
interior 18 of tank 14. Diffused light 76 illuminates
feedstock 64 distributed into tank 14, as heretofore described.
It has been found that illumination of feedstock 64 with diffused
light 76 enhances the feeding response of larval fish 12 to
feedstock 64, thereby causing larval fish 12 to more readily
feed on the artificial feedstock 64.
Spec. 10 (emphasis added). The Examiner’s rejection fails to adequately
explain why a person of ordinary skill in the art would modify Patrick,
which uses light to operatively condition fish to be attracted to a food
source, to a system that uses light to illuminate feedstock during the feeding
of larval fish.
There are a number of additional reasons we can give that militate
against the Examiner’s proposed combination and the following reasons
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should be considered merely illustrative, but not exhaustive. We are not
convinced that a person of ordinary skill in the art would have looked to the
teachings of a disinfectant device to modify a feeding device.
We also are not persuaded by the Examiner’s reasoning based on the
Japikse case. Japikse involved the relocation of a starting switch.
Japikse, 181 F.2d at 1023. Application of the Japikse case is generally
limited to situations where relocation of a part does not modify the operation
of the device. In re Mizner, Appeal No. 2012-0727, 2013 WL 6858227, *9
(PTAB Dec. 16, 2013). Patrick’s system submerges its LED light source
beneath the surface of the water. Patrick, col. 2, ll. 61–65. Appellant’s laser
and diffuser are disposed above the surface of the water. Spec. 18–19,
Fig. 1. In the instant case, the Examiner makes no findings and provides no
technical reasoning to support a finding that disposing a laser light emitter
and diffuser in a vertically spaced arrangement relative to the surface of
water would not modify the operation and efficacy of Patrick.
The Examiner’s findings of fact are not supported by a preponderance
of the evidence and, therefore, the Examiner’s legal conclusion of
unpatentability is not well-founded. In view thereof, we do not sustain the
Examiner’s unpatentability rejection of claim 1.
Claims 4–11, 14–16, 18–25, and 27
The Examiner’s rejection of these claims suffers from the same
infirmities that we have discussed above with respect to claim 1. For the
same reasons, we do not sustain the rejection of claims 4–11, 14–16, 18–25,
and 27.
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Unpatentability of Claims 2 and 13
over Patrick, Peterson, and Blake
We have reviewed the Blake reference in connection with the
Examiner’s findings and we determine that it does not cure the deficiencies
we have noted above with respect to the rejection of claims 1 and 10 from
which claims 2 and 13, respectively, depend. Thus, for the same reasons
expressed above, we do not sustain the rejection of claims 2 and 13.
CONCLUSION
Claims
Rejected
35
U.S.C. §
Reference(s)/Basis Aff’d Reversed
1, 2, 4-11, 13-
16, 18-25, 27
112 Indefiniteness 1, 2, 4-11, 13-
16, 18-25, 27
1, 2, 4-11, 13-
16, 18-25, 27
112 Written Description 1, 2, 4-11, 13-
16, 18-25, 27
1, 4-11, 14-
16, 18-25, 27
103 Patrick, Peterson, 1, 4-11, 14-
16, 18-25, 27
2, 13 103 Patrick, Peterson, Blake 2, 13
Overall
Outcome
1, 2, 4-11, 13-
16, 18-25, 27

REVERSED