Ex Parte 7,220,018 B2 et al

Patent Trials and Appeals Board

Mar 26, 2013

90011864 - (R) (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 10/30/2013
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
10/30/2013 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 ORBITALTECHNOLOGIES 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 REQUEST FOR REHEARING
Appeal 2013-004262
Reexamination Control Nos. 90/011,864
Patent 7,220,018 B2

2

Orbital seeks relief in its Request for Rehearing, see
37 C.F.R. § 41.52, from the Patent Trial and Appeal Board Decision
(March 27, 2013) affirming the Examiner’s decision to reject claims 1-8 of
the ‘018 Patent, U.S. 7,220,018 B2, Marine LED Lighting System and
Method (May 22, 2007). (See Reh’g Req. 1, 14-16.)
In a rehearing request, appellants have the burden to “state with
particularity the points believed to have been misapprehended or overlooked
by the Board.” 37 C.F.R. § 41.52 (a)(1). Orbital has not made the requisite
showing.
Orbital asserts that the Board overlooked or misapprehended points
concerning the Examiner’s determination of a substantial new question of
patentability (SNQ) and obviousness. Orbital explicitly requests the Board
to vacate the “SNQ Order”
1
and implicitly requests the Board to alter its
conclusion of obviousness. (See Reh’g Req. 15-16.)
This appeal relates to another Board appeal, PTAB Appeal No. 2013-
004264, for which Orbital also seeks rehearing, involving another of
Orbital’s patents, U.S. 7,473,008 B2. That rehearing decision issues
concurrently herewith and is adopted and incorporated herein by reference.
We deny the requested relief.
Background
As the Decision notes, the ‘018 Patent describes a marine habitat LED
(light emitting diode) lighting system. (Dec. 1.) Figure 1 of the ’018 Patent
depicts a housing 10 covering marine habitat 17 as shown below:

1
Order Granting/Denying Request for Ex Parte Reexamination
(Sept. 8, 2011).
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The housing includes air inlet vents 18 and fans 16. An LED array
(undepicted) is attached to the underside of housing 10 to light the marine
habitat 17. (See Dec. 1.)
Obviousness
Orbital does not direct attention to a particular claim. According to
Orbital, Orbital’s contentions show that the Board overlooked Orbital’s
argument that “modifying Tomofuji to use an LED lighting system [as the
Examiner proposes] . . . would render Tomofuji unsatisfactory for its
intended purpose and change its principle of operation.” (Id.)
Orbital contends that “the purpose of Tomofuji’s cooling system is to
‘prevent illuminator damage and/or fire accident,’ even if the temperature
inside the cover ‘rises abnormally high due to e.g. lighting of an illuminating
lamp.’” (Reh’g Req. 14 (quoting Tomofuji, Abstract).) Orbital also
contends that “LED [lights] . . . generate little heat,” so “Tomofuji’s cooling
system would not obviously . . . prevent fire,” if used to cool LEDs. (Reh’g
Req. 14.)

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The Decision discusses part of the Examiner’s obviousness rationale
as follows:
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.

(Dec. 19 (citing Ans. 42-43).)

Orbital does not challenge the Board’s fact finding repeated supra that
“cooling LED systems was well known in the art as evidenced by Ignatius’s
teachings.” Orbital also does not challenge the Board’s reasoning and fact
finding that “[s]killed 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.”
(Dec. 20.)
A central purpose behind Tomofuji’s lighting system is to provide
lighting, i.e., inter alia, “to illuminate[] the fishes in a tank,” and also “to
utilize the [light] as a room interior design.” (See Tomofuji ¶¶ 2-3.) Of
course, the purpose of the cooling system is to cool the tank. Cooling a tank
that has a sufficient number of LEDs to light a tank, or a tank and a room,
would not change Tomofuji’s principle, which involves lighting and cooling,
or render the lighting and cooling system unsatisfactory for its intended
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Reexamination Control Nos. 90/011,864
Patent 7,220,018 B2

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purpose of lighting and cooling. Consequently, Orbital fails to show an
overlooked point concerning obviousness.
SNQ
Orbital characterizes the translation as “additional art” that cannot be
used if not originally cited in, or provided with, the SNQ Order (supra
note 1) according to Belkin Int’l, Inc. v. Kappos, 696 F.3d 1379 (Fed. Cir.
2012) and In re Baxter Travenol Labs, 952 F.2d 388, 390 (1991). (See
Reh’g Req. 4, 12-13.) The Decision addressed various forms of the
argument, reasoning that the translation, or the abstract, is not “additional
art”:
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 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.
(Dec. 6-7.)
Orbital also argues that the Board should vacate the reexamination
because the Examiner relied upon a machine translation of Tomofuji, but the
Examiner did not supply the translation to Orbital, until after Orbital asked
for a translation, which occurred after the final rejection. (See Ans. 3, n. 1,
7; Dec. 8 (citing Ans. 3, Reply Br. 11).) Orbital also argues that it did not
waive the SNQ issue, as the Decision and the Examiner find, because
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Orbital did not know the Examiner used a translation until at some point
during prosecution after the SNQ Order. (See Reh’g Req. 4, 7-9.)
As the Decision notes, the record does not support Orbital’s lack of
knowledge theory. Orbital acknowledges that the Examiner’s SNQ Order
indicates that the Examiner provided an English translation. (Dec. 8.) The
applicable portion of the SNQ Order follows:
Submitted Prior Art in the Request
The substantial new question of patentability (SNQ)
consideration is based on the following references:
Japanese Patent No. 9-308409 to Tomofuji English Translation
is provided herewith (hereinafter “Tomofuji”).
(See SNQ Order 2.)
As the passage shows, as Orbital argues in its Reply Brief, and as the
Decision notes, the SNQ Order indicates that the Examiner relied upon a
translation, even if there were conflicting indications that the Examiner did
not. Orbital also maintains that “[b]ased on the continuing record . . .
elements of the underlying Tomofuji reference were discussed, and these
elements were not found in the English language abstract that was provided
with the Order.” (Reh’g Req. 5.) These factors, independently or together,
should have indicated to Orbital that the Examiner relied upon a translation
and that the translation, to a Japanese language document, was an issue.
Orbital did not ask for a translation after receiving the SNQ Order,
and waited until it filed its Appeal Brief to raise an issue about a lack of a
translation to the Examiner. As the Decision notes, “Orbital does not
apprise the Board of persuasive authority for granting relief based on waiting
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for something which was not requested.” (Dec. 9.) Orbital also does not
dispute the finding that it could have obtained a free machine translation on
a website or otherwise obtained a translation. (See Dec. 9; Reh’g Req. 8
(Orbital admits that “[a]gain, there is no dispute as to whether patentee could
have obtained a different translation through other means.”).)
Orbital now argues that it did not waive the SNQ issue by failing to
raise it before the appeal, because the Examiner and the Board “do[] not
explain how the patentee should have known to demand a translation.”
(Reh’g Req. 4.)
2
However, the SNQ Order itself, or the other factors noted,
including the Japanese language document, indicate that a translation would
be used by the Examiner. The SNQ Order puts Orbital on notice that the
Examiner used a translation. The Japanese language document would have
constituted a reasonable indication that a translation would be an issue.
Orbital essentially argues that an oversight by the Examiner, i.e., not
providing the translation at the same time as the SNQ Order, should redound
to a vacated procedure that began over two years prior. As the Decision
explains, Orbital’s tactical

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.

(Dec. 11.)

2
The Decision does consider the SNQ issue and other related issues in the
alternative. (See Dec. 18.)
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Further, according to the Examiner’s Answer, after Orbital filed the
Appeal Brief (August 16, 2012), the Examiner contacted “Appellant . . . on
September 4, 2012 to discuss the procedural issue of how to make the
translation of Tomofuji of record as discussed below. Appellant agreed to
[have the Examiner] add the translation as an attachment to an Examiner’s
Answer, rather than re-open prosecution.” (Ans. 3, n. 1 (emphasis added);
accord Ans. 6).) The Examiner Interview Summary (interview
Sept. 4, 2012, mailed Sept. 12, 2012) tracks the Answer:
Examiner asked Mr. Longley . . . whether it would be desirable
to attach the translation as an appendix to an Examiner’s
Answer or to re-open prosecution and provide it in a non-final
rejection. Mr. Longley agreed to accept the translation as an
appendix to an Examiner’s Answer, but also recognized that is
was within the discretion of the PTO to re-open prosecution.

The record reflects that Orbital elected to wait for the translation in
the Answer. The Examiner added the translation and abstract to the Answer
as an attachment, because Orbital declined the Examiner’s offer to re-open
prosecution.
Further, as the Decision notes, Orbital “does not request that
prosecution be reopened, further indicating that Orbital has not been
prejudiced.” (Dec. 16-17 (emphasis added).) Orbital states in its Appeal
Brief:
Nor would it be proper to reopen the reexamination merely to
place a translation of the Tomofuji reference on record, because
reopening prosecution to permit a new reexamination based on
the same or similar art would not raise any substantial new
question of patentability, and it would place an unreasonable
and unjustifiable burden on the patentee to require an answer to
such a proceeding under 37 C.F.R. § 1.515.
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(App. Br. 62 (partially quoted in Dec. at 16.).)
After the Appeal Brief and Examiner Interview Summary, but
before the Answer, Orbital filed a three-page Interview Summary
(October 2, 2011). In it, Orbital states, inter alia, the following:
The Office has discretion to reopen prosecution
after filing of the Appeal Brief, based on appropriate
procedures as defined by the Board. Respectfully, Patent
Holder’s representative submits that if prosecution is
reopened, the arguments in the Appeal Brief should be
considered on the merits.

The Examiner’s Interview Summary states that lack of
translation for the Tomofuji reference is a procedural issue. . . .
This position is respectfully traversed.

. . .To the contrary, where there is no translation . . . there
is no prima facie case . . . .

The Examiner’s Interview Summary states that
Applicant’s representative agreed to accept a translation of the
Tomofuji reference in the Examiner’s Answer. . . . This
position is respectfully traversed.

With all due respect, the Patent Holder reserves the right
to appeal the Order granting the Request for Reexamination
based on the prior art of record in the Order, and providing a
translation in Examiner’s Answer is not a remedy for this issue.
In addition, if a translation (or any other new evidence) is
provided in Examiner’s Answer, the Patent Holder respectfully
requests justification under the rules of the Board, so that a
proper response may be prepared. Further, the Patent Holder
respectfully submits that any new evidence provided in the
Examiner’s Answer would constitute new grounds for rejection,
and should be treated accordingly.

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Patent Holder’s Interview Summary 2 (last italicized emphasis added by the
Board).
Hence, as the record shows, Orbital essentially sought to preserve its
options: “Where the patent holder respectfully traverses any position stated
in the Examiner’s Summary, it is understood that this is done to preserve the
Patent Holder’s rights.” Id. at 3. The record shows that Orbital chose the
right to appeal to ask the Board to vacate the SNQ Order, instead of re-
opening prosecution. (See Dec. 17.)
In its Reply Brief, armed with the Examiner’s translation, Orbital
chose to maintain its appeal, rather than seeking a remand. That is,
assuming for the sake of argument that it was not too late to ask to re-open
after having waived a chance to re-open and having denied the Examiner’s
offer, Orbital repeats the Examiner’s statements in the Interview Summary
and in the Answer. Orbital states that its
Summary of Interview . . . expressly traverses any such
characterization of Patentee’s Position. In particular,
Patentees’ Interview Summary acknowledges that the Office
has discretion to reopen prosecution, but Patentee nonetheless
explicitly reserves the right to appeal based on the lack of
translation, including the right to appeal the Order granting the
Request for Ex Parte Reexamination.
(Reply Br. 11 (emphasis added).)
In other words, the record shows that Orbital “explicitly” maintained
its appeal to the Board, even in the Reply Brief, after having waived a
remand in its Appeal Brief, and after declining the Examiner’s offer prior to
filing its Reply Brief. Orbital does repeat, as noted supra, a portion of
Patent Holder’s Interview Summary, but that portion merely obliquely states
a point of law: “any new evidence provided in the Examiner’s Answer
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would constitute new grounds of rejection, and should be treated
accordingly.”
Even if repeating portions of the Patent Holder’s Interview Summary
somehow constitutes a request to the Board to re-open prosecution, prior to
that, Orbital rejected the Examiner’s explicit offer to re-open prosecution.
Therefore, Orbital waived the right to remand to address any due process or
fairness issues that would have been mooted by accepting the explicit offer
to re-open prosecution. Any due process concerns based on “new evidence”
in the translation are intertwined with the SNQ issue, according to Orbital’s
arguments, which appear to be predicated, primarily, on alleged
inconsistencies between the SNQ Order and the translation, as discussed
below. Pursuant to the “special dispatch” mandate under 35 U.S.C. § 305, it
would not be fair to the public, including other applicants, to allow Orbital to
appeal to the Board for some issues and seek a remand for other intertwined
issues. Orbital declined the offer by the Examiner for the same remedy, and
the PTO expended valuable public resources in writing the Answer,
docketing the appeal, and forming a Board panel to consider the myriad of
appeal issues.
Moreover, Orbital chose “explicitly . . . to appeal based on the lack of
translation, including the right to appeal the Order granting the Request for
Ex Parte Reexamination.” (Reply Br. 11.) Orbital also requested the Board
to exclude the translation “from consideration in the reexamination,”
because it allegedly was not “considered in determining a substantial new
question of patentability.” (Reply Br. 17 (citing Belkin Int’l, Inc. v. Kappos,
696 F.3d 1379 (Fed. Cir. 2012).) Orbital similarly disputed that the
“machine translation . . . can be relied upon in maintaining any final
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rejection . . . because the translation was not on record at the time the
rejections were made final, and it was not on record when the reexamination
was ordered.” (Reply 18.)
However, as stated, the record reflects that the Examiner did consider
the translation, and the Examiner offered to cure any deficiency of due
process, fairness, or otherwise by making the final rejection a non-final
rejection, but Orbital declined the offer. The record shows that Orbital did
know about the translation prior to filing its Appeal Brief. (See App.
Br. 62.) During a re-opened prosecution, which Orbital declined, Orbital
could have addressed, before the Examiner, how the translation surprised
Orbital, caused a material shift during prosecution, or otherwise prejudiced
Orbital. During a re-opened prosecution, Orbital also could have followed
the stated procedure for raising and preserving the SNQ question before the
Examiner and the Director. (See Dec. 7 (discussing SNQ Clarification
procedures to preserve SNQ issues).)
Orbital maintains that the Decision overlooks that the Examiner and
Orbital do not agree on what Tomofuji teaches or discloses. (Reh’g
Req. 10.) The Examiner “find[s] that Appellant provided a general outline
of the features of Tomofuji which were consistent with the teachings relied
upon by Examiners in the rejections.” (Ans. 5.) If Orbital is correct, and the
disagreement relates to the contents of the translation, this exemplifies why
Orbital should have accepted the Examiner’s offer to re-open prosecution.
To support its argument of a disagreement with the Examiner over
what Tomofuji teaches, Orbital quotes a passage from the Decision that
explains why there is no material inconsistency between the SNQ Order and
the translation. (See Reh’g Req. 11 (quoting Dec. 13).) Orbital does not
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13
describe how the passage from the Decision fails to describe Tomofuji’s
teachings accurately, or where Orbital disagrees with the facts. (See Reh’g
Req. 10-11.)
The Decision generally finds that Tomofuji’s figures depict a housing,
a light source, and a cooling system, over a tank. (See Dec. 5-6.) Orbital
repeats the Board’s finding that in Tomofuji, “the ‘light’ 2 simply includes
the housing cover 3 and the lamps 4 therein,” and that the Examiner refers
to the “light 2 as a housing.” (See Reh’g Req. 11-12.) Orbital complains
that “it is material to know whether the reference 2 of Tomofuji is relied
upon as a housing or a light.” (Reh’g Req. 11.) This argument exalts form
over substance.
The housing cover 3, a part of the light fixture 2, reasonably
corresponds to the “housing” recited in claim 1. The Abstract refers to a
“cover” 3, and the translation similarly refers to “covering 3.” (Tomofuji
¶ 20.) The translation refers to “fluorescent lamp 4” (id.), while the Abstract
refers to “the cover of an illuminator.” These documents do not conflict
with one another in any material manner that has been identified by Orbital.
Reliance on either one, or both, does not show an invalid SNQ, unfairness,
or a lack of notice.
The Examiner’s SNQ Order refers to a “housing 2 for a lighting
system 4.” (SNQ Order 7.) Tomofuji’s Figure 1, which is the same figure
depicted at the published Abstract, show numerals 2 and 3 side-by-side and
pointing to the same area on the housing cover. Regardless of the particular
numeral cited, Tomofuji’s Figures 1-3 plainly show a housing within which
reside lamps 4, corresponding to the claimed position of a “light source
mounted to the inner side of said housing.” Orbital does not dispute, with
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Patent 7,220,018 B2

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specificity, the Board’s or the Examiner’s findings as to what Tomofuji
materially teaches.
“All reexamination proceedings under this section, including any
appeal to the Board of Patent appeals and interferences, will be conducted
with special dispatch within the Office.” 35 U.S.C. § 305. Of course, the
procedures must be conducted with fairness to applicants and the public,
while considering the special dispatch mandate. In this case, the record
shows that Orbital chose to maintain its appeal to the Board and wait for the
translation in the Answer, rather than accept the Examiner’s offer to re-open
prosecution. Orbital fails to show that the Board overlooked or
misapprehended a material point in affirming the Examiner’s decision to
reject the claims on appeal.
Pursuant to 37 C.F.R § 41.52 (a) (1), this Rehearing Decision is
designated to be a new rehearing decision only to the limited extent that it
discusses findings of record not explicitly recited in the Decision to show that
Orbital declined the offer by the Examiner to re-open prosecution and waived any
right, predicated on the translation, to a remand by the Board. Orbital on a
rehearing request, will have the right to point the Board “with particularity the
points believed to have been misapprehended or overlooked by the Board” in
making that finding. See also 37 C.F.R § 41.50 (d) (“The Board may order
appellant to additionally brief any matter that the Board considers to be of
assistance in reaching a reasoned decision on the pending appeal.”). This
Rehearing Decision does not constitute a new ground of rejection.

REHEARING DECISION
DENIED

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

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