Ex Parte 7,220,018 B2 et al

Patent Trial and Appeal Board

Mar 26, 2013

90011864 (P.T.A.B. Mar. 26, 2013)

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.
90/011,864 08/17/2011 7,220,018 B2 1046.0002 4265
25763 7590 03/27/2013
DORSEY & WHITNEY LLP - MINNEAPOLIS
ATTENTION: PATENT PROSECUTION DOCKETING DEPARTMENT
INTELLECTUAL PROPERTY PRACTICE GROUP - PT/23RD FL
50 SOUTH SIXTH STREET, SUITE 1500
MINNEAPOLIS, MN 55402-1498
EXAMINER
WHITTINGTON, KENNETH
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
03/27/2013 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 ORBITAL TECHNOLOGIES CORPORATION.
____________

Appeal 2013-004262
Reexamination Control No. 90/011,864
United States Patent 7,220,018 B2
Technology Center 3900
____________

Before KARL D. EASTHOM, KEVIN F. TURNER, and BRUCE R.
WINSOR, Administrative Patent Judges.

EASTHOM, Administrative Patent Judge.

DECISION ON APPEAL
Appeal 2013-004262
Reexamination Control Nos. 90/011,864
Patent 7,220,018 B2

2

Appellant, Patent Owner Orbital Technologies Corporation, appeals
under 35 U.S.C. §§ 134(b) and 306 from the Examiner’s decision to finally
reject claims 1-8 of U.S. 7,220,018 B2 Marine LED Lighting System and
Method (May 22, 2007). Orbital also appeals the Examiner’s determination
of a substantial new question of patentability (SNQ). (App. Br. 12-13.) We
have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
1
This appeal relates to
another Board appeal, PTAB 2013-004264, involving another of Orbital’s
patents, U.S. 7,220,008 B2, which recites similar claims rejected for similar
reasons. That decision issues concurrently herewith and is adopted and
incorporated herein by reference.
We AFFIRM.

STATEMENT OF THE CASE
The ‘018 patent describes a marine habitat LED (light emitting diode)
lighting system. (See ‘018 Abstract.) Figure 1 of the’018 patent depicts a
housing 10 covering marine habitat 17 as shown below:

1
See also attached Delegation of Authority in Ex Parte Reexamination
Proceeding Appeal (Chief Judge James D. Smith delegating authority to the
panel to review SNQ issues).
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The housing of Figure 1 includes air inlet vents 18 and fans 16. (See
‘018 patent, col. 4, ll. 17-31.) An LED array (undepicted) is attached to the
underside of housing 10 to light the marine habitat 17. (See Fig. 2; App.
Br. 9.)
The Examiner finally rejected claims 1-8 under 35 U.S.C. § 103(a) as
obvious as follows:
1. Claims 1-3 and 5-7 based on Tomofuji, JP 9-308409 A (Dec. 2, 1997),
Kuiper, WO 91/18970 (Dec. 12, 1991), Lebens, U.S. 6,305,818 B1
(Oct. 23, 2001), and Ignatius, U.S. 5,278,432 (Jan. 11, 1994).
2

2. Claims 4 and 8 based on Tomofuji, Kuiper, Lebens, Ignatius and
Janssen et al., Enzyme Photosynthetic Efficiency of Dunaliella Tertiolecta
Under Short Light/Dark Cycles, Enzyme & Microbial Tech. 29, 298-305
(2001) [hereinafter Janssen].
3

3. Claims 1, 2, 5, and 6 based on Tazawa, JP 10-162609 (June 19, 1998),
Tomofuji, Lebens, and Ignatius.

4. Claims 3 and 7 based on Tazawa, Tomofuji, Lebens, Ignatius, and
Kuiper.

2
Orbital refers to a related rejection of these claims based on Kuiper,
Tomofuji, Lebens and Ignatius – i.e., the order of references is slightly
different, but the order is not deemed to create an important distinction here.
(See App. Br. 12.) See In re Mouttet, 686 F.3d 1322 (Fed. Cir. 2012)
(“where the relevant factual inquiries underlying an obviousness
determination are otherwise clear, characterization by the examiner of prior
art as ‘primary’ and ‘secondary’ is merely a matter of presentation with no
legal significance.”).
3
Orbital refers to a related rejection of these claims based on Kuiper,
Tomofuji, Lebens, Ignatius, and Janssen – i.e., the order of references is
slightly different, but the order is not deemed to create be an important
distinction here. (See App. Br. 12; note 2.)

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5. Claims 4 and 8 based on Tazawa, Tomofuji, Lebens, Ignatius, and
Janssen.

(See App. Br. 12.)
Appealed claim 1 follows:
1. (Original) A combination marine habitat and lighting system therefor
comprising:
a marine habitat having an open top defined by a top edge and a lighting
system including:
a housing connectable to said top edge to substantially cover said
open top, said housing further including an inner side facing
said open top when said housing is connected to said top edge
and an opposite outer side;
an LED light source mounted to the inner side of said housing, said
LED light source comprising at least one light engine having a
plurality of individual LEDs capable of providing light at a
wavelength from about 380 nm to about 690 nm;
a power supply sufficient to drive said LEDs;
a controller connected with said power source for controlling the
activation status and the intensity of one or more of said
individual LEDs; and
a cooling system provided in said housing.

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Patent 7,220,018 B2

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ANALYSIS
Tomofuji, a Japanese language patent, is involved in all the rejections.
On appeal, Orbital asserts various procedural attacks against the SNQ
determination and the rejections primarily because the PTO did not provide
Orbital with a translation of Tomofuji until after Orbital filed its Appeal
Brief. Orbital never requested a translation and waited until its Appeal Brief
to raise issues about a lack of a translation. The Examiner then supplied a
translation in the Answer.
Figures l-4 of Tomofuji depict a marine habitat lighting system as
shown below:

Figure 1 depicts an “illuminator cover” 3 having lamps 4 therein.
(See Tomofuji Figs. 2, 3; Abstract). The cover 3 covers the marine habitat 1
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and includes vents and a fan to cool the lamps 4. (See Tomofuji Figs. 1-4;
Abstract.)
SNQ and Prima Facie Case - Lack of a Translation
Orbital argues that because the PTO did not provide an English
translation of Tomofuji with the Order Granting Request for Ex Parte
Reexamination (Sept. 8, 2011)[hereinafter SNQ Order], the SNQ is deficient
and should be vacated. (See App. Br. 13.) According to Orbital, the SNQ is
deficient because “no translation was provided, and the Request does not as
a matter of law or fact raise any substantial new question of patentability
based on the prior art of record.” (App. Br. 60.) Orbital argues that by
relying on a translation that was not of record, the Examiner did not employ
“patents and printed publications” as required by 35 U.S.C § 303 (a) and 37
C.F.R. § 1.510(b)(1). (See App. Br. 13.) Orbital similarly attacks the prima
facie case in the final rejection based on a lack of a translation as discussed
further below.
Orbital’s arguments lacks merit. The SNQ Order cites the Tomofuji
patent and the English Abstract thereof. The applicable statute, 35 U.S.C.
§ 303 (a), does not require a translation to be cited or supplied: “[T]he
Director may determine whether a substantial new question of patentability
is raised by patents and publications . . . cited under the provisions of section
301 of this title.” The translation is merely evidence of what the patent
discloses and does not alter the citation of the patent. As the Examiner
recognizes, the “translation merely confirms the facts of the reference relied
upon.” (Ans. 12.) Such evidence is proper in a reexamination proceeding to
show what the document teaches. Cf. In re Baxter Travenol Labs, 952 F.2d
388, 390 (1991) (extrinsic non-prior art declaration evidence can be used to
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show the material impliedly disclosed in a prior art document – evidence
shows what those of skill in the art would have recognized as disclosed in
the prior art reference). Orbital does not explain how the outcome would
have been different had a translation been provided in the SNQ Order.
In addition, Orbital did not raise any SNQ issue or the particular
translation SNQ issue until the appeal and thereby waives the issues as the
Examiner persuasively finds. The Examiner relies on “Clarification of the
Procedure for Seeking Review of a Finding of a Substantial New Question of
Patentability in Ex Parte Reexamination Proceedings,” Fed. Reg. Vol. 75,
No. 122 (June 25, 2010) [hereinafter SNQ Clarification] (see Ans. 37-39 and
Appendix 2 (quoting and attaching the SNQ Clarification). As the Examiner
points out, the SNQ Clarification requires an applicant to seek SNQ relief
from an examiner in order to preserve the issue before the Board:
In order to preserve the right to have the BPAI review of
[sic] the SNQ issue, a patent owner must first request
reconsideration of the SNQ issue by the examiner.
Accordingly, for ex parte reexamination proceedings ordered
on or after June 25, 2010, the patent owner may seek a final
agency decision from the BPAI on the SNQ issue only if the
patent owner first requests reconsideration before the examiner
(e.g., in a patent owner's statement under 37 CFR 1.530 or in a
patent owner's response under 37 CFR 1.111) and then seeks
review of the examiner's SNQ determination before the BPAI.
In its appeal brief, the patent owner is encouraged to clearly
present the issue and arguments regarding the examiner's SNQ
determination under a separate heading and identify the
communication in which the patent owner first requested
reconsideration before the examiner.

(Ans. 37-39 (emphasis by the Examiner, quoting the SNQ Clarification at
36357).)
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Orbital variously argues as follows:
(A) “Patentee did not wait to point out the issue . . . . Patentee made a
good faith attempt to advance prosecution.” (Reply Br. 9.)
(B) “[B]ased on the record, it is proper raise the issue when no
translation is provided in the next office action; that is, the final rejection
dated April 20, 2012 from which the Appeal is made.” (Id. at 10.) “Patentee
. . . raised the issue at the first known opportunity, following the final
rejection of February 23, 2012, from which this appeal is made.” (Id. at 11
(emphasis added).)
(C) The SNQ issue has been raised “by challenging any substantial
new question of patentability based on hindsight.” (App.Br. 61.)
Notwithstanding Orbital’s various arguments, the record supports the
timing under option (B) supra. Orbital waited until its Appeal Brief – i.e.,
“at the first known opportunity” according to Orbital - to raise the issue of
an improper SNQ based on a lack of a translation of Tomofuji. (See, e.g.,
Ans. 3 (Orbital objected “for the first time” in the Appeal Brief); accord
Reply Br. 10-11.)
Orbital also maintains that it prosecuted in good faith and did not need
to request a translation earlier because “the record is in fact unclear as to
whether a translation was to be provided.” (Reply Br. 11.) According to
Orbital, the SNQ Order indicates that an English translation of Tomofuji is
attached to the Order, but the Examiner’s List of References Cited by
Applicant and Considered by the Examiner (Sept. 14, 2011) indicates that
only an English Abstract “was considered when determining a substantial
new question of patentability under 35 U.S.C. § 303(a).” (Reply Br. 10.)
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Orbital’s argument essentially is that since it was unsure of whether it
would be sent a translation after it received the SNQ Order, there was no
need to require one until the appeal. However, Orbital’s procedure violates
the procedure required by SNQ Clarification. Orbital does not apprise the
Board of persuasive authority for granting relief based on waiting for
something which was not requested. As soon as the Examiner became
aware of Orbital’s complaint – i.e., after Orbital appealed – the Examiner
attached the machine translation employed by the Examiner to the Answer
for Orbital. (See Ans. 4-6; Reply Br. 11.) Orbital also could have obtained a
free copy from various websites. (See Ans. 11, n. 4.) The Examiner
obtained a machine translation “on August 29, 2011 [prior to the SNQ
Order] . . . to confirm the facts relied upon for the Order mailed September
8, 2011, the Non-Final mailed December 5, 2011 and the Final Action.”
(Ans. 3.)
4

Perhaps recognizing that the SNQ Clarification shows that Orbital did
not preserve the issue, as indicated supra, Orbital alternatively argues that it
did preserve an SNQ issue by arguing in its earlier Amendments
(Feb. 8, 2012) that the Examiner and Requester used “impermissible
‘hindsight’” to combine the references. (See Reply Br. 28 (citing
Amendments at 4).) However, this prior “hindsight” argument does not
mention the translation or otherwise join the translation issue to the prima
facie issue, let alone the SNQ issue. (See Ans. 5 (“Appellant . . . did not
request reconsideration of the determinations of the SNQ[]”).) As the
Examiner finds, the Amendments also fail to address the merits of “any of

4
The dates “8/29/11” on the bottom of the Abstract and the English machine
translation corroborate the Examiner. (See Ans. Attachment 1.)
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the findings outlined in the [SNQ] Order” (Ans. 38) and instead “Patentee
traverses the rejections of claims 1-8” outlined in the “Office Action Dated
December 5, 2011” (Amendments 4).
The SNQ Order finds, inter alia, that “a reasonable examiner would
find the teachings of Tomofuji, Kuiper, L[e]bens and Ignatius to be
important in determining the patentability of claims 1-8 of the ‘018 Patent.”
(SNQ Order 6.) As the Examiner recognizes, the prima facie case and SNQ
are distinctly different. (See Ans. 38-39 (quoting MPEP 2242 to show that
SNQ is distinct from a prima facie case).) For example, as indicated, the
SNQ issue involves whether “a reasonable examiner would consider the
teaching to be important in deciding whether or not the claim was
patentable. . . . It is not necessary that a ‘prima facie’ case of unpatentability
exist as to the claim in order for ‘a substantial new question of patentability’
to be present as to the claim.” (MPEP § 2242; accord Ans. 39 (quoting inter
alia same).) In other words, Orbital’s truncated arguments to the Examiner
prior to the Appeal Brief directed to a prima facie case do not even address
the SNQ issue, let alone preserve it. Orbital fails to explain why the asserted
combination of prior art references, with or without a Tomofuji translation,
would not be important to a reasonable examiner in determining
patentability according to the SNQ determination.
Orbital also argues that the lack of a translation of record means “as a
matter of law and fact the prior art is not read as a whole . . . and there is no
substantial question of patentability based on the prior art of record, as
required under 35 U.S.C. § 303(a) and 37 C.F.R. § 1.515.” (App. Br. 59.)
Again, Orbital did not preserve this SNQ argument. If Orbital’s legal theory
is correct, an appellant need only wait until the appeal, after an examiner
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considers a variety of other evidence and arguments directed to patentability,
and then argue that as a matter of law, the failure to provide a translation
automatically means there is an improper SNQ. Such a procedure not only
would violate the clear guidance in the SNQ Clarification, it also would
violate the clear statutory mandate requiring “all reexamination proceedings
. . . [to be] conducted with special dispatch within the Office.” 35 U.S.C.
§ 305. For example, depending on the merits, an examiner might vacate an
earlier SNQ order, and regardless of the merits, most likely would supply a
translation if so requested in order to expedite prosecution.
Assuming for the argument that Orbital did preserve the issue, Orbital
similarly maintains that the reference must be read “as a whole” as a matter
of law which Orbital argues is impossible without a translation. (See App.
Br. 59.) Similarly, Orbital maintains that without that translation, “there is
no way for the patentee to know how exactly any substantial new questions
of patentability were determined, much less a basis on which to fully
traverse the proposed rejections on the merits.” (App. Br. 60.)
Rather than showing a reason to vacate the SNQ Order as Orbital
urges, these arguments exemplify why Orbital should have asked the
Examiner for a translation. Moreover, the record shows, contrary to
Orbital’s asserted lack of knowledge about the content of Tomofuji, that
Orbital was fully aware of that content and used it to traverse the proposed
rejections prior to the appeal.
For example, as the Examiner points out (see Ans. 13-14), prior to the
appeal, Orbital discusses Tomofuji as follows:
Applicant respectfully submits that Tomofuji (1997) is
directed toward a cooling device for an illuminator for an
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aquarium fish basin. However, Tomofuji discloses a marine
lighting system for illuminating marine life known since the
1960s (see attached Curran Declaration, paragraphs 6 and 7)
and is simply an extension of these well-known marine lighting
systems referenced in the '018 patent which discloses a
fluorescent marine lighting system having an aquarium cover
and vents for venting heated air generated by the light radiating
from the fluorescent bulbs. As evidenced by Figure 3,
Tomofuji implements fluorescent lighting, but there is no
disclosure or teaching of using LEDs to light the aquarium
where the light and heat source is NOT in the housing volume
and that the LED chips needing to be cooled are normally
facing the aquarium toward the marine life and are typically
shielded from cooling that occurs in the housing. Moreover,
while Tomofuji discloses an air release portion and a fan motor
(see Tomofuji, Abstract), nowhere in Tomofuji is there
motivation or suggestion as to whether the same or similar
device would be useful were an LED to be provided. Even as
mentioned, one could cool a volume near the LED light source
without cooling the LED light source and fail; this is one of the
basic and fundamental gaps that the subject patent addresses
that was not obvious to persons skilled in the art. In addition,
without any disclosure or teaching of LEDs, there is no
disclosure or teaching of a controller for such LEDs.

(Reply to Office Action 8-9 (April 13, 2012) (attaching Curran
Declaration).)
5

As the passage supra shows, Orbital describes Tomofuji’s “system for
illuminating marine life known since the 1960s,” including and “vents for
venting heated air generated by the light radiating from the fluorescent
bulbs,” and the “fluorescent lighting,” and argues that Tomofuji does not

5
Orbital states that the Curran Declaration has not been entered and does not
point to it to support its position. (See App. Br. 67.) The companion Board
decision, PTAB, 2013-004262, addresses a similar Curran declaration.
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disclose LEDs. No dispute exists about what Tomofuji teaches. Orbital
does not allege that the Examiner incorrectly finds a claim element in
Tomofuji. Orbital merely asserts a “lack of consistency” because the
Examiner allegedly relied partly on the “English language abstract” and “it
is not clear from the record how the machine translation was relied upon in
the Order granting the reexamination.” (Reply Br. 16.)
To support the latter argument, Orbital refers to the Order which states
that “‘the light sources are mounted within the housing 2.’” (Reply Br. 15
(quoting Order).) Orbital then points out, to further show inconsistency, that
according to the machine translation, the “reference 2 is a light, not a
housing” and that “reference 4 refers to florescent lamps 4 arranged in
covering 3, not light sources mounted within housing 2.” (See Reply
Br. 15.) Contrary to the argument, there is no material inconsistency: the
“light” 2 simply includes the housing cover 3 and the lamps 4 therein such
that the Examiner’s reference to the light 2 as a housing reasonably apprises
Orbital of the basis for the claim rejections. (See Tomofuji Figs. 1-4; accord
¶¶ 13-16.) Orbital refers to similar seeming inconsistencies related to the
“cooling fan,” and “fan motor 14,” but Figures 1-4 clearly show a fan and
Orbital does not dispute that. (See Reply Br. 15.)
Orbital similarly argues that the “Request . . . relies on detailed
knowledge of the underlying Tomofuji text” without a translation of record
including the following description: “‘Air (represented by arrows in
Figures 2 and 3) is drawn from the bottom of each illuminating lamp 4,
through an internal cooling channel 8 of plate 7, and exhausted through top
vents 12 of the cover 3.’ See Request filed 8/17/2011, p. 31. . . .” (App.
Br. 59 (quoting Request for Reexam).) Orbital complains that of these
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elements, “only 3 and 12 are identified in the Abstract . . . therefore, this is
highly problematic . . . where these elements cannot be determined based on
the prior art of record.” (See id.at 59-60.)
In other words, according to Orbital, the Examiner and Requester
relied on a translation not yet of record and identified elements that are not
identified in the abstract. It is not clear why this means the SNQ Order
should be vacated. If Orbital had a question about what the reference
teaches, it could have obtained or asked the PTO for a translation. In any
event, with or without the translation or the abstract, Orbital fails to show
any material discrepancy as to what Tomofuji teaches in relation to the
claimed subject matter. Orbital’s arguments fail to show how the translation
conflicts in a material way, if any, with the English abstract or the
underlying patent. The Examiner and Orbital virtually agree as to the
material teachings involved in Tomofuji. Given the simple nature of
Tomofuji’s disclosure (see e.g., figures supra) and the claimed invention,
Orbital fails to explain why the SNQ Order should be vacated.
Hence, assuming arguendo Orbital did preserve the SNQ issue, given
the simple nature of Tomofuji’s system which was well-known back to the
1960’s according to Orbital, and given the simple nature of the claimed
invention, “a reasonable examiner would consider the teaching [even
without a translation] to be important in deciding whether or not the claim
was patentable.” (See MPEP § 2242.) As stated, the record reflects that no
material dispute exists as to what the reference teaches. As the Examiner
finds, Orbital’s Amendment fails to address the specific findings in the SNQ.
(Ans. 38.) Orbital’s Brief also fails to address the specific findings. (See
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App. Br. 61.) Orbital has failed to explain substantively or procedurally how
the Examiner’s SNQ determination is deficient.
In a similar procedural attack asserting a lack of a prima facie case
based on a lack of a translation to Tomofuji, Orbital also cites to Ex parte
Jones, 62 USPQ2d 1206 (BPAI 2001) (unpublished) and states that an
Examiner cannot rely “on the English-language Abstract (only) of a foreign-
language reference, where there is no translation of the underlying
document.” (App. Br. 29.) On the other hand, Orbital also states that “the
Office explicitly relies on elements in the Tomofuji reference that do not
appear in the Abstract, and are found only in the underlying Japanese text.”
(Id.) Orbital here makes two conflicting arguments: the Examiner relied
only on the Abstract, and the Examiner did not rely only on the Abstract.
The record reflects that the Examiner does not only rely solely on the
Abstract. For example, the Examiner relies on figures in Tomofuji. The
Examiner also relies on the translation. (See Ans. 9-10; 41-60.)
Jones (which is not precedential) does not help Orbital. Jones does
not address the timing procedure for providing a translation or even require
the Examiner to provide a translation to an applicant unless an applicant
requests one. Jones directs the examiner to rely on a translation if one is
available and at the least, supply it on appeal so that the Board need not
“expend[ ] the resources” and also because the Board is “primarily a board
of review.” See Jones, 62 USPQ2d. at 1209. Jones notes that reliance by
the Board on a translation upon which an examiner has not relied may raise
new issues and warrant a new ground of rejection, see id., but that situation
is not in play here. Further, Orbital does not seek reopening of prosecution
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or otherwise claim surprise or allege that the Examiner’s Answer relies on
new material facts found only in the Tomofuji translation.
Jones states that an applicant should either try to obtain a translation
or “request the examiner to supply a translation. If a translation is not
supplied by the examiner, the applicant may wish to consider seeking
supervisory relief by way of a petition (37 CFR § 1.81) to have the examiner
directed to obtain and supply a translation.” Jones, 62 USPQ2d. at 1208-
1209. Orbital cites Jones but does not follow its outlined procedure.
As indicated, the Examiner supplied the translation after Orbital raised
the issue. Orbital apparently never actually asked for a translation, even on
appeal. (See Ans. 10-11). Hence, Orbital’s complaint is that it was denied
something which it did not request. The Examiner points out that “free
translations are available from various websites.” (Ans. 11, n. 4.) Finally,
while the Board has authority to decide the SNQ issue and does so here,
Orbital’s central issue is in actuality a translation issue in disguise. Issues
premised on a lack of a translation are reviewable properly by petition to the
Director. See, e.g., Ex parte Julia Valles Camps and Xavier Miquel
Gutierriez , No. 2009-001720 (BPAI 2010) (relying on and discussing Jones
under similar circumstances). (See Ans. 3-13.)
Orbital did not seek relief properly by way of petition to the Director
or by seeking relief from the Examiner and thereby waives the SNQ issue
predicated on a lack of a translation at least for these two reasons. Even if
Orbital did not waive the SNQ issue in general, Orbital does not show a
substantive deficiency in the SNQ or show that the outcome would have
been different had a translation been provided with the SNQ. Orbital also
does not request that prosecution be reopened, further indicating that Orbital
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has not been prejudiced: “nor would it be proper to reopen prosecution
merely to place a translation of Tomofuji on record.” (App. Br. 62.)
Orbital fails to address the merits of the SNQ with more than truncated
arguments. Sustaining the rejections as discussed below further shows that
the Examiner did not err in finding an SNQ or a prima facie case.
Prior Art
Commendable illustrated summaries of the prior art of record appear
in the Request for Reexamination and the Appeal Brief. Brief discussions of
Kuiper and Ignatius immediately follow with further discussions of the prior
art of record following in the ensuing discussion.
A. Kuiper
Kuiper teaches employing LEDs in “tubes, strips or panels that can be
placed in the aqueous environment” (Kuiper 7, ll. 17-28), including in “open
troughs or basins, or . . . closed containers or tanks.” (Kuiper 7, ll. 31-32.)
Such closed containers enable aquatic organism cultivation and “more
accurate control of process conditions, such as temperature, pressure and
composition of the gas above the aqueous environment” (Kuiper 7, ll. 30-
36.) Kuiper’s LEDs can be controlled to save energy “with impunity by
periodically switching the light sources on and off according to time
schedule in agreement with the time constant in question.” (Kuiper 6, ll. 32-
36.) Kuiper’s LEDs “save an enormous amount of energy in comparison
with normal sources of artificial light, which cover a much larger section of
the light spectrum and, moreover, convert a large part of the energy supplied
to them into heat.” (Kuiper 4, ll. 16-19.)

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B. Ignatius
Ignatius discloses that LEDs or “other optoelectronic devices may be
used, such as cold cathode fluorescent devices.” (Ignatius, col. 3, ll. 37-38.)
“The array of LEDs . . . is preferably used to enhance or test plant growth. . .
. However, the LED array may have other applications, such as the
irradiation of animal or human tissue. In the latter applications, the LEDs
may be selected to provide different ranges of spectral emissions, as
desired.” (Id. at col. 4, ll. 48-58.) An “array 10 includes an aluminum or
copper-coated substrate 12 that acts as a heat sink for heat generated by
LEDs 14.” (Id. at col. 3, ll. 38-40.) “Array 10 may consist of any number of
sets of LEDS, with six sets of LEDs being preferred in a single modular
housing, as depicted in FIG. 4.” (Id. at col. 3, ll. 54-56.)
“Yet another advantage is that the light intensity may be continuously
varied from a zero output up to a maximum output, which may equal or
exceed the equivalent of one sun output (2000 micro-mols per second per
meter squared) from an array that is only 3 inches by 4 inches in size.” (Id.
at col. 3, ll. 1-6.)
“The housings in which the arrays are disposed may be used
separately or as modular components of a larger system.” (Id. at col. 3, ll. 7-
8.) The modular housing 28 unit has air-inlets 30, a fan, and a glass plate 34
to protect the LED array which can be mounted on a cooling substrate 12 as
indicated supra and an additional finned-type heat sink 36, 38. (See Fig. 5.)
The glass panel 34 on the outside of the housing allows the LEDs to
illuminate plants and other objects. (Id. at col. 5, ll. 4-12; Figs. 4, 5.)

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Rejections
I. Claims 1-3 and 5-7 - Tomofuji, Kuiper, Lebens, and Ignatius

The record supports the Examiner’s findings, rationale and
conclusion, which are adopted and incorporated herein by reference. (See
Ans. 12-24; 41-53.) Orbital’s arguments focus on claim 1 which is selected
to be representative of the group except as otherwise noted.
As the Examiner finds, notwithstanding Orbital’s arguments,
Tomofuji discloses the limitations of claim 1 except for the LEDs. (See
Ans. 41-43.) Tomofuji teaches a combination marine habitat and lighting
system with an open top tank 1, a housing cover 3, and a fan motor 14 with
cooling means including cooling fans, air discharge 11, and light sources 4
mounted to an inner side of the housing over the open top, an implicit power
supply, and a cooling system 11. (See Ans. 41; Tomofuji translation ¶¶ 14-
16; Figs. 1-4.)
The Examiner finds that Kuiper teaches LED lights in a combination
marine habitat and lighting system including a controller to control the
individual LEDs. (Ans. 42.) The Examiner finds and reasons that replacing
Tomofuji’s fluorescent lights with Kuiper’s LEDs would have been obvious
for the purpose of saving energy and to promote or prohibit various forms of
aquatic plant growth as Kuiper teaches. The Examiner employs Lebens to
further suggest a power supply for the LEDs and finds that the Tomofuji and
Kuiper systems must inherently operate with power supplies. The Examiner
also points out that cooling LED systems was well known in the art as
evidenced by Ignatius’s teachings. (See Ans. 42-43.)
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As discussed supra, Orbital asserts that “there is no actual prima face
case of obviousness” (App. Br. 30) because the Examiner relies on
“elements of the Tomofuji reference . . . found only in the underlying
Japanese text.” (App. Br. 29.) To the contrary, no dispute exists that the
claim elements are found in the reference. In addition to Orbital explaining
what Tomofuji teaches as noted supra, Orbital’s discussion of Tomofuji also
appears similar to or the same as the Examiner’s. (See App. Br. 15-17.)
Orbital does not explain persuasively how the Examiner erred in finding and
determining that the combination renders obvious the claim elements.
6

Orbital’s remaining arguments reduce to the assertion that it would
not have been obvious to replace one type of light for another – Tomofuji’s
fluorescent light system with Kuiper’s LED light system. (See App. Br. 34-
36.) Orbital asserts that the proposed modification of Tomofuji would
change its principle of operation because LED lights operate cooler than
fluorescent light bulbs and LED lights would not need to be cooled with
Tomofuji’s system. (App. Br. 35-36.)
However, Kuiper and Ignatius each teach, essentially, that LEDs emit
less heat than other lights. (See supra Prior Art A, B.) Skilled artisans,
given the combined teachings, would have recognized that enough LEDs at
a sufficient size or power for a desired application necessarily would create
heat which would require cooling, like Tomofuji’s fluorescent light system
and Ignatius’s LED system. (See Ans. 42-43 (citing Ignatius at col. 2, ll. 40-
49); Kuiper 4, 10-12 and Ignatius at col. 5, ll. 4-12.).) For example, Ignatius

6
Orbital also asserts that feature 4 is not identified in the English abstract.
However, Orbital does not dispute that Tomofuji discloses fluorescent
lamps 4 as the Examiner finds. (See App. Br. 16.)
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describes an inexpensive system using a variable amount of LEDs to
produce minimal heat as compared to metal halide or other prior art lamps,
but the LED system preferably includes a “cooling means such as a fan or
active heat sink for cooling the interior of the housing.” (Ignatius, col. 2,
ll. 41-44.)
Claim 1 broadly reads “a cooling system provided in said housing.”
Claim 1 does not even require the cooling system to cool the LED lights. As
support for claim 1, Orbital’s Appeal Brief describes the cooling system as
follows: “A cooling system (13, 21, 35, see also Figs. 1, 3, above; Fig. 6,
below) is provided in the housing (10, 20, 26.) (App. Br. 9.) The ‘’018
patent refers to a “fan-based cooling system 13. The system 13 includes a
fan housing with one or more fans 16 and a plurality of air inlet vents 18.”
(‘018 patent, col. 4, ll. 25-27.) Appellant’s reference to element 20, a
watertight housing, points to the “heat circulation system 21. The system 21
includes water inlet and outlet ports to dissipate the heat from the LED via
the surrounding water.” (‘018 patent, col. 5, ll. 16-18.)
In general, according to the ‘018 patent: “The cooling system uses
either natural convection with the air to dissipate heat in a top-mounted
lighting system, or through water cooling via conduction, forced water
cooling or an air-water loop to cool the submersible lighting configurations.”
(‘018 patent, col. 3, ll. 36-40.) If “the cooling system uses . . . natural
convection with the air,” then even without a fan-based cooling system,
vents such as Tomofuji discloses would satisfy the claims because they
would constitute part of “a cooling system . . . in said housing.” In any
event, Tomofuji teaches a cooling system with vents and fans, Kuiper does
not teach away from a cooling system, and “Ignatius . . . teaches a cooling
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system for LEDs since they do emit heat in use.”) (See Ans. 17 (citing
Ignatius at col. 5, ll. 4-12).)
Orbital argues that Ignatius “does not suggest the use of cooled LED
systems in an open top aquarium environment . . . to the contrary, Ignatius
teaches that LED light systems need protection from the environment, and
should be used in dry applications instead.” (App. Br. 39 (citing Ignatius at
col. 2, ll. 40-49; col. 5, ll. 19-61).) Orbital further relies on “Janssen . . .
which also teaches that the Ignatius device should be used outside aquarium
environments, not inside the cover of an open top marine habitat, as recited
in claim 1.” (App. Br. 39.)
These assertions about an “open top aquarium environment” introduce
some confusion into the argument because the claimed housing
“substantially cover[s] the open top” – i.e., the claimed habitat is not open
when the housing is attached. In any event, the prior art of record does not
support Orbital’s arguments for various reasons. First, as the Examiner
recognizes, Orbital’s arguments improperly attack the references
individually. (Ans. 18, n. 6.) Second, contrary to Orbital’s arguments,
Janssen does not disparage or even discuss Ignatius. (See Ans. 18-19.)
Third, as the Examiner also recognizes, neither Janssen nor Ignatius requires
that “the only place for the array is outside and not in the housing.” (See
Ans. 19.) “One having ordinary skill in the art would understand this
implies the lights are simply not placed in the water.” (Id. (emphasis
added).)
Further, Ignatius supports the Examiner’s rationale. Ignatius discloses
modular housings with an open-vent fan based cooling system to cool a
panel of LEDs. (See supra Prior Art B.) Notwithstanding that a glass panel
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protects the Ignatius LED substrate from the environment, the inside of the
housing remains open to moisture in the air or otherwise due to the open
vent system. (See Ignatius Figs. 4 and 5; supra B.) Kuiper discloses similar
LED strips or panels, such that Ignatius and Kuiper both suggest that the
LED strip or panel easily could have been employed in place the fluorescent
lamps of Tomofuji. Tomofuji’s vented cover 3 and tank 1 and Ignatius’s
modular housings would have provided similar protection to the Kuiper
LED panels or strips or the similar Ignatius LED substrate.
As also indicated supra, Ignatius also discloses that fluorescent lights
and LEDs can be interchangeable, further suggesting the modification.
Orbital argues that combination involving Kuiper points artisans to a
preference for LEDs because LEDs save power and produce desired
wavelengths. Even if this teaches away from “any proposed combination
with a traditional (e.g., fluorescent) light source,” (App. Br. 38-39), Orbital’s
argument supports the Examiner’s finding that the combination suggests
replacing the fluorescent lights of Tomofuji with LEDs.
As Ignatius teaches, varying amounts of power and different
wavelengths can be used, thereby suggesting use in a variable cooling
system depending on the power. Kuiper directly supports this type of
control by teaching the use of LEDs in closed tanks to cultivate aqueous
organisms while regulating the temperature thereof for optimal growth, all
while saving energy. (See supra Prior Art, A, B.)
While Orbital also maintains that “Kuiper leads away [sic] the need
for cooling in general” (App. Br. 39), Kuiper does not support Orbital for the
reasons just noted. Kuiper discloses regulating temperature which would be
required in a closed system having a wide range of LED power to promote
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various forms of aquatic life. Ignatius further bolsters the cooling of LEDs.
(See supra Prior Art B.)
Based on the foregoing discussion, Orbital has not shown error in the
rejection of claims 1-3 and 5-7 based on Tomofuji, Kuiper, Lebens, and
Ignatius.

II. Claims 1, 2, 5, and 6 Based on Tazawa, Tomofuji, Lebens, and Ignatius

Orbital’s arguments focus on claim 1 which is selected to be
representative of the group. Orbital describes Tazawa in its Appeal Brief.
(App. Br. 26-29.) In addition to relying on the arguments addressed supra,
Orbital also maintains that “Tazawa teaches away from fluorescent lighting
as a general principle” and teaches decorative lighting which generates little
heat so that a skilled artisan would not look to Tomofuji which teaches
fluorescent lights. (App. Br. 41-42.)
Such arguments do not show unobviousness. For the reasons stated
above, including the teachings of Ignatius, Orbital effectively recognizes that
Tazawa suggests that LEDs on top of a water tank would have been
advantageous to promote marine growth. (See App. Br. 26-27.) For
example, Orbital states that “Tazawa . . . also promotes growth of living
things inside the water tank.” (App. Br. 28.) Based on the discussion above
and the record, skilled artisans would have recognized that varying types of
marine life require varying amounts of LED power which would necessitate
including temperature regulation for optimal growth. (See Tazawa Abstract;
Ans. 24-29 (finding that skilled artisans would have known that LEDs
produce heat and would require cooling as Ignatius evidences).) Tazawa
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teaches lighting up LEDs selectively and that they are “high-intensity
directional-light LED lamps” which promote growth. (Tazawa, Abstract.)
To the extent Orbital argues that the combination does not disclose or
suggest a housing, as the Examiner finds, Tazawa’s element 4, is a “lighting
apparatus” (see Tazawa Fig. 1, “Explanation of Reference Numbers”) which
appears to be a housing having an LED substrate 5 incorporated therewith
and over an water tank 1. (Ans. 29-30; accord App. Br. 26.) Tomofuji
discloses a similar light housing and aquarium as discussed supra. (Accord
App. Br. 15.) Such a housing and light combination would have been
obvious to hold lights above an aquarium to promote growth and visibility.

III. Claims 2-8 and Remaining Rejections

As indicated, Orbital relies on the unavailing arguments addressed
supra to allege error in the rejections of claims 2-8. (See App. Br. 44-58.)
While Orbital repeats limitations of claims 2-8, Orbital does not explain how
the Examiner erred. With respect to claim 2, the purpose of at least
Tomofuji, Kuiper, Tawaza, and Ignatius, as noted supra, is to promote
marine or plant growth. (See Ans. 42-43; 57.) With respect to claim 3, the
prior art of record, including an array of LEDs, necessarily discloses or
suggests “at least one of . . . discreet LEDs.” (See Ans. 33; 44 (citing Kuiper
at 7, ll. 23-29).) As another example, claim 4 requires adjusting the range of
light intensity in micro mols per square meter per second, a unit which
Ignatius and Janssen each discuss such that skilled artisans would have
recognized varying the intensity to suit the desired organism growth, as the
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Examiner finds. (See Ans. 54 (citing Janssen at 300-301, §§ 2.2, 3.1);
Ignatius, col. 3, ll. 1-6.).)
Claims 5-8 are similar in scope to claims 1-4. Orbital essentially
presents the same or similar arguments as presented for claims 1-4 and fails
to show error in the Examiner’s rejections. (See App. Br. 46-47.) The
Examiner’s responses and findings with respect to claims 1-8 are adopted
and incorporated herein by reference. Orbital has not shown error in the
SNQ determination or the rejections of claims 1-8.

CONCLUSION
“For over half a century, the Court has held that a ‘patent for a
combination which only unites old elements with no change in their
respective functions . . . obviously withdraws what already is known into the
field of its monopoly and diminishes the resources available to skillful
men.”” KSR Int’l. Co. v. Teleflex Inc., 550 U.S. 398, 415-416 (2007)
(quoting Great Atl. & Pac. Tea Co. v. Supermarket Equip. Corp., 340 U.S.
147, 152-153 (1950).) Employing LEDs in place of Tomofuji’s fluorescent
lights, or cooling Tazawa’s modified LED system, “only unites old
elements” with no change in function of the prior art cooling and lighting
marine tank systems and thereby constitutes a “principal reason” for finding
the ‘018 patent claims 1-8 obvious. See KSR, 550 U.S. at 416.

AFFIRMED

ak

Appeal 2013-004262
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Patent 7,220,018 B2

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Patent Owner:

Dorsey & Whitney, LLP – Minneapolis
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Attn: Patent Prosecution Docketing Dept.
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