Ex Parte 7473008 et al

Patent Trial and Appeal Board

Mar 26, 2013

90011865 (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.
90/011,865 08/17/2011 7473008 1046.0003 4300
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 2013-004264
Reexamination Control No. 90/011,865
United States Patent 7,473,008 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 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 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 1-7 and 15-18 of U.S. 7,473,008 B2 Marine LED Lighting
System and Method (May 22, 2007) (as originally issued and as amended in
a prior Reexamination proceeding. (See App. Br. App’x A Claims.) Orbital
also appeals the Examiner’s determination of a substantial new question of
patentability (SNQ). (App. Br. 12-13.) This appeal relates to another Board
appeal, PTAB 2013-004262, involving another of Orbital’s patents,
U.S. 7,220,018 B2, which recites similar claims rejected for similar reasons.
That decision issues concurrently herewith.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306.
1

We AFFIRM.

STATEMENT OF THE CASE
The ‘008 patent describes a marine habitat LED (light emitting diode)
lighting system. (See ‘018 Abstract.) Figure 1 of the’008 patent depicts a
housing 10 which covers a 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 to cool
the LEDs. (See ‘008 patent, col. 4, ll. 19-33.) 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 1-7 and 15-18 under 35 U.S.C.
§ 103(a) for obviousness as follows:
1. Claims 1 and 4-6 based on Tomofuji, JP 9-308409 A (Dec. 2, 1997),
Kuiper, WO 91/18970 (Dec. 12, 1991), and Ignatius, U.S. 5,278,432
(Jan. 11, 1994).

2. Claims 2 and 15-18 based on Tomofuji, Kuiper, Ignatius, and Lebens,
U.S. 6,305,818 B1 (Oct. 23, 2001).

3. Claim 3 based on Tomofuji, Kuiper, Ignatius, and Masuda, JP H6-319940
(Nov. 22, 1994).

4. Claim 7 based on Tomofuji ,Kuiper, Ignatius, and Janssen et al., ,
Photosynthetic Efficiency of Dunaliella Tertiolecta Under Short Light/Dark
Cycles, Enzyme & Microbial Tech. 29, 298-305 (2001) [hereinafter
Janssen].

5. Claims 1, 4, and 6 based on Tomofuji, Tazawa, JP 10-162609
(June 19, 1998), and Ignatius.

6. Claims 2 and 15-18 based on Tomofuji, Tazawa, Ignatius, and Lebens.

7. Claim 3 based on Tomofuji, Tazawa, Ignatius, and Masuda.

8. Claim 5 based on Tomofuji, Tazawa, Ignatius, and Kuiper.

9. Claim 7 based on Tomofuji, Tazawa, Ignatius, and Janssen.

(See App. Br. 12.)

Appeal 2013-004264
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Patent 7,473,008 B2

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Appealed claim 1 follows:
1. (Previously Presented) A combination marine habitat and lighting system,
comprising:
a marine habitat having an open top defined by a top edge; and
a lighting system comprising:
a housing connectable to the top edge to substantially cover the
open top, the housing including an inner side facing said
open top when the housing is disposed over the top edge,
and an opposite outer side;
and
an LED light source mounted to the inner side of said housing,
the 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; and
cooling means for dissipating heat generated by the LED light
source.
ANALYSIS
Tomofuji, a Japanese language patent, is involved in all the rejections.
Orbital asserts various procedural attacks against the SNQ and the rejections
because the PTO did not provide Orbital with a translation thereof or cite a
translation 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.
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Figures l-4 of Tomofuji depict a marine habitat lighting system as
shown below:

Figure 1 represents an “illuminator cover” 3 having lamps 4 therein.
(See Tomofuji Figs. 2, 3; Abstract). The cover 3 covers the marine habitat 1
and carries 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. 27, 2011) [hereinafter SNQ Order], the SNQ Order
should be vacated. (See App. Br. 13.) The Examiner attached a translation
to the Answer. 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
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record.” (App. Br. 63.) Orbital similarly argues that by relying on a
translation that was not of record at the time of the SNQ Order, the
Examiner did not employ “prior patent 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 Examiner’s prima facie showing in the final
rejection based on a lack of a timely translation. (See, e.g., App. Br. 37.)
Orbital’s arguments lack 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 at any
particular point during the proceeding, if at all: “[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 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).
In addition, Orbital did not raise the SNQ issue or the translation issue
until the appeal and thereby waives the issue 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,
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2010) [hereinafter SNQ Clarification] (see Ans. 43 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. 43 (quoting the SNQ Clarification at 36357).)

Notwithstanding the SNQ Clarification, 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 to raise the issue when no
translation was 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
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rejection of April 20, 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 improper hindsight.” (App. Br. at
64.)
The record supports the timing under Orbital’s argued 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 and the Examiner’s List of References Cited by
Applicant and Considered by the Examiner (Sept. 27, 2011) indicate 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.)
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 any authority for granting relief based on a lack of diligence on its
part. As soon as the Examiner became aware of Orbital’s complaint – i.e.,
after Orbital appealed - the Examiner attached a machine translation of
Tomofuji to the Answer for Orbital. (See Ans. 3-6; Reply Br. 11.) Orbital
also could have obtained a free copy from various websites. (See Ans. 11,
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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 January 24, 2011 and the
Final Office Action mailed April 20, 2012.” (Ans. 3.)
2

Perhaps recognizing that the SNQ Clarification shows that Orbital did
not preserve the issue, as indicated supra, Orbital alternatively argues that it
did preserve another SNQ issue by arguing in its earlier Amendments that
Tomofuji is cumulative to other prior art of record and the proposed
rejection was based on hindsight. (See Reply Br. 28, 30 (citing at
Amendments at 9 (Mar. 23, 2012).) However, these prior arguments about
“cumulative” prior art and “hindsight” do not mention the translation or the
SNQ. (See Ans. 5 (“Appellant . . . did not request reconsideration of the
determinations of the SNQs in the Order”).) Rather Orbital “traverses the
rejections of pending claims 1-7 and 15-18” in the “Office Action dated
January 24, 2012,” and does not mention the SNQ Order. (See
Amendments 5.)
While Orbital argues in the Amendments that Tomofuji is cumulative
to the art of record employed during prosecution in earlier reexamination,
the argument is in context to the rejections, not the SNQ. For example,
Orbital stresses that Tomofuji does not teach LEDs – e.g., there is “no
disclosure or teaching of using LEDs to light the aquarium.”
(Amendments 9.)
Moreover, even if Tomofuji is similar to prior art cited during
prosecution (i.e., either the original patent prosecution or the prior

2
The date on the bottom of the English machine translation “8/29/11”
corroborates the Examiner. (See Ans. Attachment 1.)
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reexamination prosecution), that similarity, without more, does not mean an
improper SNQ exits or that Orbital timely raised the SNQ issued. The SNQ
in this reexamination is based on a combination of prior art, including, for
example, the teachings of Tomofuji, Kuiper, and Ignatius. Ignatius
specifically teaches cooling the LEDs employed for promoting plant growth
as indicated further below. Orbital does not point to arguments asserting
that the combination involving Ignatius is cumulative to the art cited or
applied during the underlying prosecution or reexamination.
After summarizing the prosecution history including the prior
reexamination history, the SNQ Order finds that the given reason for
confirming the claims during the reexamination is that “the prior art of
record failed to disclose or make obvious the cooling means” recited in the
independent claims. (SNQ 5.) Based on the findings involved in the
summary, Examiner defines the SNQ as follows: “Therefore, based on the
summary of prosecution history, including amendments to the claims, the
remarks thereto and the reasons for allowance . . . a combination of
references that . . . teaches the feature of ‘cooling means for dissipating heat
generated by the LED light source’ or a step of providing therefor as recited
in claims 1-7 and 15-18 may raise a substantial new question of
patentability.” (SNQ Order 5.) The Examiner further finds that “a
reasonable examiner would find the teachings of Tomofuji in view of Kuiper
and Ignatius to be important in determining the patentability of claims 1-7
and 15-18 of the ‘008 Patent,” and that those “teachings . . . are not
cumulative to any written discussion on the record of teachings of the prior
art.” (SNQ Order 7.) In making the decision, the SNQ Order further relies
on and cites the Request for Reexamination (SNQ Order 6 (citing Request at
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24-26).) The Request states that “Tomofuji and Ignatius were not cited
during prosecution . . . and collectively teach the ‘cooling means for
dissipating heat generated by the LED light source’ limitation identified in
the Examiner’s Statement of Reasons for Patentability/Confirmation as the
reason for issuance of the NIRC.” (Request at 24.)
Given this prosecution history (original and during the
reexamination), Orbital had to have been aware that to raise and overcome
the SNQ issue, it at least would have to show that the combination of
Tomofuji and Ignatius is cumulative to the prior art applied in the underlying
prosecutions. By making a truncated assertion that Tomofuji alone is
cumulative to prior art cited during prosecution, without mentioning the
collective teachings involving Ignatius, Orbital simply fails to preserve a
challenge to the clearly articulated SNQ findings – or to show that they are
in error, even if the issue had been raised. As the Examiner finds, Orbital’s
Amendments (March 23, 2012) merely respond to the Examiner’s non-final
Action (Jan. 24, 2012) “and there is no SNQ analysis by Appellant and
further there is no discussion of any of the findings outlined in the [SNQ
Order].” (Ans. 44.)
As the Examiner also recognizes, the prima facie case and SNQ are
distinctly different issues. (See Ans. 44 (quoting MPEP § 2242 to show that
SNQ is distinct from a prima facie case).) For example, as the Examiner’s
findings supra show, 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;
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accord Ans. 44 (quoting inter alia same).) In other words, Orbital’s
arguments to the Examiner prior to the Appeal Brief against the combination
and prima facie case also do not preserve the SNQ issue.
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 actual prior art of record, as
required under 35 U.S.C. § 303(a) and 37 C.F.R. § 1.515.” (App. Br. 62.)
Again, Orbital did not preserve this SNQ argument. If Orbital’s legal theory
is correct, an appellant need only wait until the appeal before the Board,
contrary to the clear guidance in the SNQ Clarification, supra, and then
argue, that as a matter of law, the failure to provide a translation
automatically means there is an improper SNQ.
Assuming for the sake of argument that Orbital did preserve one of
the SNQ issues now presented, 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. 62.) Similarly, Orbital
maintains that without that translation, “there is no way for the patentee to
know exactly how any substantial new question of patentability was
determined, much less a basis on which to fully traverse the proposed
rejections on the merits.” (App. Br. 63.)
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 or obtained one. Moreover, the record shows,
contrary to Orbital’s asserted lack of knowledge about the content of
Tomofuji, that Orbital understood the content in Tomofuji and used it to
traverse the proposed rejections prior to the appeal.
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Patent 7,473,008 B2

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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
aquarium fish basin. However, Tomofuji is cumulative to the
art of record in the '008 patent (see e.g., US Patent 3,557,753;
U.S. Patent 3,662,777; and U.S. Patent 3,913,526; see attached
Curran Declaration, paragraphs 6 and 7). As evidenced by
Figure 3, Tomofuji implements fluorescent lighting, but there is
no disclosure or teaching of using LEDs to light the aquarium.
In addition, without any disclosure or teaching of LEDs, there
is no disclosure or teaching of a controller for such LEDs.
Moreover, while Tomofuji discloses an air release portion and a
fan motor (see Tomofuji, Abstract), nowhere in Tomofuji
provide 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 gap that the subject patent
addresses that was not obvious to person skilled in the art.

(Orbital's Response 9-10 (March 23, 2012).)

The Examiner also points out that Orbital’s expert declarant Curran
confirms a portion of Tomofuji’s disclosure as reprinted below:

JP 9308409 (herein “Tomofuji”), laid-open on December 12,
1997, and entitled “Cooling Device For Illuminator For
Aquarium Fish Basin,” is cited in the Office Action and is
simply an extension of these well-known marine lighting
systems referenced in the '008 patent, and 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.

(Curran Decl. ¶ 7 (March 23, 2012).)
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As seen above, Curran states that Tomofuji “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.” In
other words, Curran apparently understands what Tomofuji discloses. No
material dispute exists about what Tomofuji teaches. Orbital does not allege
that the Examiner incorrectly finds a claim element existing in Tomofuji.
Rather, Orbital alleges 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 SNQ Order which
states that the “light sources are mounted within the housing 2.’” (Reply Br.
15 (quoting SNQ 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.) Despite these assertions, no material inconsistency exists:
skilled artisans would have understood that the “light” 2 simply includes the
housing cover 3 and the lamps 4 therein such that the Examiner’s original
reference to the light 2 as a housing reasonably apprises Orbital of the basis
for the claim rejections. (See Tomofuji Figs. 1-4; Tomofuji Translation
¶¶ 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
motor and Orbital does not dispute that. (See Reply Br. 15.)
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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. 63 (quoting Request for Reexam).) Orbital complains that of these
elements, “only references 3 and 12 are actually identified in the Abstract”
which is “highly problematic . . . where these elements cannot be determined
based on the prior art of record.” (See id.at 63.)
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 or that the prima facie case is lacking. Even if Orbital had
a question about what Tomofuji 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 persuasively why the SNQ Order should be vacated
or that the prima facie case is deficient.
Further as to the SNQ, given the simple nature of Tomofuji’s system
which was well-known back to the 1960’s according to Orbital and given the
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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.) Orbital has
failed to explain substantively or procedurally how the Examiner’s SNQ
determination is deficient, or how the outcome would have changed had a
translation been provided with the SNQ Order.
In a related 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. 31.) On the other hand, Orbital also states that “the
Office explicitly relies on elements in of 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 on the Abstract. For
example, the Examiner relies on figures in Tomofuji. The Examiner also
relies on the translation. (See Ans. 9-10; 47-65.)
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
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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. Orbital does not seek reopening of prosecution and states
that it would be improper to do so. (See App. Br. 65.) Orbital otherwise
does not assert unfair 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 noted, the Examiner supplied the translation after Orbital raised
the issue and 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 and still does not request. The
Examiner points out that “free translations are available from various
websites.” (Ans. 11, n. 4.) Finally, any issue premised on a lack of a
translation is 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).
Orbital did not seek relief properly by way of petition to the Director
or by seeking relief from the Examiner as to the translation. Orbital also did
not raise any SNQ issue before the Examiner. Therefore, Orbital waives the
SNQ issue. Even if Orbital did not waive the SNQ issue, Orbital does not
show a substantive deficiency in the SNQ or even address the merits thereof
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with more than truncated arguments. Orbital does not show how the
outcome would have been different had a translation been provided with an
SNQ, and even asserts that it would be improper “to reopen the
reexamination merely to place a translation of the Tomofuji reference on
record.” (App. Br. 65.) Sustaining the rejections as discussed below, which
requires a higher burden than sustaining the SNQ, further shows that the
Examiner did not err finding an SNQ. Orbital also does not show a lack of a
prima facie case as set forth above and further below.
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
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the light spectrum and, moreover, convert a large part of the energy supplied
to them into heat.” (Kuiper 4, ll. 16-19.)
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.) “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.)
“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 micromols 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 10. The array and substrate 12 can include another
cooling substrate or finned heat sink 36, 38. The glass panel 34 on the
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outside of the housing allows the LEDs to illuminate plants and other
objects. (Id. at col. 1, ll. 34-44; col. 5, ll. 4-12; Figs. 1, 4, 5.)

Rejections
I. Claims 1 and 4-6 - Tomofuji, Kuiper, and Ignatius
The record supports the Examiner’s findings, rationale and
conclusion, which are adopted and incorporated herein by reference. (See
Ans. 12-19; 38-41, 47-49.) Orbital’s arguments primarily focus on claim 1,
which is selected hereby as a representative claim except as otherwise noted.
(See App. Br. 28-40.)
As the Examiner finds, notwithstanding Orbital’s arguments,
Tomofuji discloses most of the limitations of claim 1 except for the LEDs.
(See Ans. 47-49.) Tomofuji teaches a combination marine habitat and
lighting system with an open top tank 1, a housing cover 3, 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 tank top,
and a power supply. (See Ans. 47-49; 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 LED
wavelengths. (Ans. 48.) The Examiner finds and reasons that replacing
Tomofuji’s fluorescent lamps with Kuiper’s LEDs would have been obvious
for the purpose of saving energy over fluorescent lamps and to promote
aquatic growth, as Kuiper teaches. (See Ans. 48 (Kuiper cite omitted).) The
Examiner also finds that cooling LED systems with fans was well known in
the art as evidenced by Ignatius’s teachings. (See Ans. 49.)
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As discussed supra, Orbital asserts that “there is no actual prima face
case of obviousness” (App. Br. 33) because the Examiner relies on
“elements of the Tomofuji reference . . . found only in the underlying
Japanese text.” (App. Br. 31.) Since the elements are found in the Japanese
text, no dispute exists that the claim elements are found in the reference. As
such, the Examiner’s prima facie case is persuasive. In addition to Orbital
and Orbital’s expert explaining what Tomofuji teaches as noted supra,
Orbital’s discussion of Tomofuji also appears similar to, or the same as, the
Examiner’s discussion. (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.
3

The thrust of Orbital’s remaining arguments reduces 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. (See App. Br. 37-39.) Orbital also argues that Kuiper
teaches away from cooling. (App. Br. 38.) Orbital also asserts that Janssen,
which is not part of this rejection, like Ignatius, teaches that “the only

3
In addition to Orbital’s complaint discussed supra about features not
identified in the Abstract of Tomofuji, Orbital also complains that other
features, such as features 4 and 14 are not identified in the English abstract.
(See App. Br. 33, 36) However, Orbital and Orbital’s expert Curran agree
that Tomofuji discloses florescent lamps and there is no dispute that
Tomofuji discloses fluorescent lamps 4, a fan motor, and related
components, such as vents, as the Examiner finds. (See also App. Br. 15-17
(discussing Tomofuji in detail); Ans. 13, 47-48 (similar discussion).)
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suitable location for such an [LED] array is on the outside of the aquarium.”
(App. Br. 39.)
However, as the Examiner recognizes, Kuiper and Ignatius each teach,
essentially, that LEDs emit less heat than other lights. 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 in a tank or aquarium which would require cooling. (See Ans. 16-17
(citing Kuiper at 4, 10-12 and Ignatius at col. 5, ll. 4-12.).) For example,
Ignatius 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.) Orbital’s expert undermines Orbital and explains that at
least some known LEDs require cooling – based on “the large amount of
heat generated within the high flux LEDs.” (See Curran Decl. ¶ 25.)
In other words, the prior art of record and Orbital’s expert agree, at
least some LEDs do require heat extraction – apparently as either the
number or size of the LEDs increases (in a given substrate area for
example). Claim 1 requires “cooling means for dissipating heat generated
by the LED light source.” Claim 1 does not recite how many LEDs are
required. Orbital does not argue that Tomofuji’s cooling fan and vent
structure does not satisfy the cooling means recited in the claim under the
sixth paragraph of 35 U.S.C. 112 or otherwise.
The SNQ Order notes that, based on remarks in a prior amendment by
Orbital during the prior reexamination, and the ‘008 patent, “the ‘cooling
means’ appears to be a means-plus-function limitation” and describes the
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corresponding structure in the ‘008 patent as “a fan/air cooled system that
draws air from the light system and exhaust[s it] from the light housing”.
(See SNQ Order 5 (noting Orbital’s citations to the ‘008 patent at col. 7,
ll. 22-27 and 37-38).) In this proceeding, Orbital appears to attempt to
broaden the corresponding structure for the cooling means to include other
embodiments and describes the cooling means as follows: “Cooling means
(13, 21, 35, see also Figs. 1, 3, above; Fig. 6, below) are provided for
dissipating heat generated by the LED light source.” (App. Br. 9.)
4

The ‘008 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.” (‘008 patent, col. 4, ll. 26-28.) That disclosed fan based structure
coalesces with the Examiner’s claim interpretation in the SNQ Order.
Orbital does not dispute this correspondence. As such, there is “no reason to
depart from the position consistently taken on this issue by the parties.” Cf.
Ayst Technologies Inc. v. Emap, Inc., 268 F.3d 1364, 1367 (Fed. Cir. 2001)
(noting the parties “have not suggested that the structure recited in the
limitations is sufficient to remove those limitations from the reach of section
112 paragraph 6”).
In general, according to the ‘008 patent, a fan is not necessarily part of
the cooling means: “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

4
In the related appeal, PTAB 2013-004262, Orbital identifies the same
structure for the broader “cooling system” recited in claim 1 at issue there.
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submersible lighting conditions.” (‘008 patent, col. 3, ll. 33-39 (emphasis
added).)
5

Tomofuji’s cooling system, which includes vents and fans, satisfies
the recited cooling means as it corresponds to the disclosed fan and vent
structure in the ‘008 patent, as the Examiner essentially finds. (See Ans. 48.)
Employing Kuiper’s LED panels in place of Tomofuji’s florescent lights as
the Examiner proposes, in combination with Tomofuji’s cooling fans and
vent system, satisfies the recited cooling means for cooling LEDs. (See Ans.
48.) Orbital does not explain why the Examiner’s reading of the claim 1
cooling means onto the combination of Tomofuji’s fan based structure and
Kuiper’s LED panel is in error. (See Ans. 17, 48.) (Orbital’s expert does
testify in his declaration, without adequate support, that Tomofuji’s fan
system would not cool LEDs. That testimony is discussed below.)
As discussed, Kuiper (see supra Prior Art A) also mentions
controlling the temperature of an LED system, contrary to Orbital’s
arguments. (See Kuiper 7, ll. 35-36.) As the Examiner finds, Kuiper does
not teach away from a cooling system, and “Ignatius . . . teaches a cooling
system for LEDs since they do emit heat in use.”) (Ans. 16-17 (citing
Ignatius at col. 5, ll. 4-12).)
Orbital maintains that Ignatius does not suggest the use of cooled
LED systems in an open top aquarium environment and that Ignatius’s LED

5
Orbital also refers in its Appeal Brief to element 21 as a type of cooling
means: i.e., 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.” (‘008 patent, col. 5, ll. 17-19.) In other words, this latter alternative
structure does not include a fan.

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system must be protected from the environment. (See App. Br. 39 (citing
Ignatius at col. 2, ll. 40-49; col. 5, ll. 19-61).) Orbital further relies on
Janssen, which Orbital maintains shows that Ignatius and Janssen-type LED
sources “must be protected from the environment, and . . . not used in an
open top marine habitat.” (App. Br. 43.)
These assertions about protection and an “open top marine
environment” are not persuasive because the claimed housing “substantially
cover[s] the open top” – i.e., the claimed habitat is not open when the
housing is attached. Also, the prior art of record does not support Orbital’s
arguments for various reasons. As the Examiner recognizes, Orbital’s
arguments improperly attack the references individually. (See Ans. 18, n. 6.)
Contrary to Orbital’s arguments, Janssen does not disparage or discuss
Ignatius or require LEDs to be outside a housing. (See Ans. 18-19.) 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.)
Even if Ignatius employs a cooled LED lighting system in a housing, and
Janssen employs an LED system outside of an aquarium (see App. Br. 23,
25 (describing Ignatius and Janssen), as the Examiner reasons: “One having
ordinary skill in the art would understand this implies the lights are simply
not placed in the water.” (Ans. 19.)
Ignatius further supports the Examiner’s rationale. Ignatius discloses
modular housings with an open-vent fan based cooling system to cool a
substrate or panel of LEDs. (See supra Prior Art B (discussing Ignatius’s
“array 10 [that] includes an aluminum or copper-coated substrate 12 that acts
as a heat sink for heat generated by LEDs 14.”) Notwithstanding that a glass
panel protects the LED array from the environment, the LEDs are open to
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moisture in the air or otherwise due to the open-vent system. (See id. and
Ignatius Figs. 4 and 5.) Kuiper discloses similar LED strips or panels which
can be employed in closed tanks. (See supra Prior Art B.) Accordingly,
Ignatius and Kuiper both suggest that an LED strip, panel, or substrate,
easily could have been employed in place the fluorescent lamps of Tomofuji.
Still further, Tomofuji’s vented cover 3 and tank 1 and Ignatius’s
modular housings would have provided similar protection to the Kuiper or
Ignatius LED substrates, strips, or panels. Based on the collective teachings,
skilled artisans would have recognized how to incorporate Kuiper’s LED
panel array into Tomofuji’s marine system as a substitute for the florescent
lamps in order to save energy and protect and cool the LEDs so that they
would create light for extended periods of time in order to promote marine
growth.
The Examiner relies on Ignatius for its teaching for cooling an LED
panel, and relies on Kuiper’s LED panel for its teaching of promoting
aquatic growth. (See Ans. 48-49.) Either LED panel satisfies the LED
limitations in the claims. Ignatius’s disclosure that fluorescent lights and
LEDs are interchangeable further suggests the modification of using
Kuiper’s LED panel in place of Tomofuji’s fluorescent lamps 4. As Ignatius
and Kuiper also teach, varying amounts of power and different wavelengths
can be used, thereby suggesting using LED panels in a variable cooling
system depending on the power. Kuiper directly supports this type of
control by teaching the use of LEDs in tanks to cultivate aqueous organisms
while regulating the temperature thereof for optimal growth, all while saving
energy. (See Prior Art A, B.)
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Orbital also asserts that Ignatius is not analogous art because it only
applies to terrestrial applications. (App. Br. 59-60 (citing Curran Decl. ¶¶ 8,
30, 39).) The Examiner finds otherwise. (Ans. 38-39.) The Examiner’s
findings are more persuasive. As the Examiner reasons, Ignatius is in the
analogous art of providing artificial lighting to promote organic growth of
plants and animals. Ignatius also solves particular problems of regulating
temperature of LED light sources to promote such growth. (See Ans. 39.)
Nothing in Ignatius limits its organic growth to terrestrial applications, as
Ignatius describes broad applications. (See supra Prior Art B.) As similarly
noted below in the analogous art discussion of Lebens and claim 2, the
preambular phrase in claim 1, “a combination marine habitat and lighting
system,” constitutes an intended use and does not require marine life to be in
the habitat or otherwise preclude the system from growing terrestrial life.
The Curran Declaration also does not support Orbital’s truncated
assertion (see App. Br. 59-60 (citing Curran Decl. ¶ 26)) that Ignatius
constitutes nonanalogous art because “retrofits” of fluorescent cooling
systems to LED systems “were disfavored in general.” Appellant does not
explain how a general disfavor shows nonanalogous art. Curran’s quotation
of a second manufacturer’s observation that “[g]enerally” complete new
designs are “better” than “retrofit” systems only show a natural desire by a
merchant to sell a new design based on the common sense notion that such a
design might work better than any given retrofit. (See Curran Decl. ¶ 26.)
As Curran notes, terrestrial systems are discussed in the ‘008 patent as
prior art. This discussion indicates that skilled artisans would have turned to
such prior art for guidance. (See Curran ¶ 8.) Also, any disparagement of
LEDs employed in terrestrial systems involves large tanks and low power
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lights: according to the ‘008 patent, light cannot penetrate water “below a
few feet without powerful lighting systems.” (Id. (citing ‘008 patent, col. 1,
ll. 34-42).) Claims in the ‘008 patent do not limit the “marine habitat” to
greater than a few feet of water, even if the preambular “marine habitat”
amounts to more than an intended use of the claimed system.
While Orbital also maintains that “Kuiper teaches away from any
need for cooling” (App. Br. 38), Kuiper does not support Orbital for the
reasons just noted. Kuiper does not disparage cooling the LEDs and
discloses regulating temperature which would be required in Tomofuji’s
modified system having a wide range of LEDs powered to promote various
forms of aquatic life. As indicated, Ignatius and Orbital’s expert further
show bolster the notion that some LEDs must be cooled.
Based on the foregoing discussion, Orbital has not shown error in the
rejection of claims 1 and 4-6 based on Tomofuji, Kuiper, and Ignatius.
Claims -6 also are discussed further below.

II. Claims 1, 4, and 6 Based on Tazawa, Tomofuji, 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 similar to those
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. (See App. Br. 41.)
Such arguments do not show unobviousness. For the reasons stated
above, including the teachings of Ignatius, Orbital effectively recognizes that
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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 in Tazawa, the “LED lamps . . . promote
dramatic effect and growth of coral, water plants and the like.” (App.
Br. 26 (emphasis added).)
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 in
some systems for optimal growth. (See Tazawa Abstract; Ans. 21-26
(finding that skilled artisans, in light of the collective teachings, would have
known that LEDs produce some heat and would require cooling as Ignatius
evidences); see Ignatius discussion supra B).) Tazawa also teaches lighting
up LEDs selectively and that they are “high-intensity directional-light LED
lamps” which promote growth. (Tazawa, Abstract.) As also discussed
supra, Orbital’s expert testifies that some LEDs generate heat. In other
words, the record does not evidence teaching away from cooling LEDs in a
marine housing over an aquarium.
Orbital also argues that Ignatius does not teach a cooling system
“inside the cover of an open-top [] aquarium, as taught by Tomofuji, Tazawa
and Kuiper.” (App. Br. 43.) This argument is similar to that addressed
above. As indicated supra, Ignatius’s LED substrates or Kuiper’s similar
LED strips or panels are not limited to modular housings or non-marine
applications, and to the extent the LEDs and cooling system requires
protection, skilled artisans would have been able to modify the systems of
Tomofuji or Tazawa to provide the protection desired in order to maintain a
well-lit aquarium, cool the LEDs, and promote growth.
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Based on the foregoing discussion, Orbital has not shown error in the
rejection of claims 1, 4, and 6. Claims 4 and 6 also are discussed further
below.

III. Claims 2 and 15-18 - Based on Tomofuji, Kuiper, Ignatius, and Lebens,
or, Tomofuji, Tazawa, Ignatius, and Lebens.
In addition to arguments similar to those addressed supra, Orbital
argues that Lebens is directed to a flashlight or strobe for use in video
camera applications which is non-analogous art “to the problem of marine
habitat lighting.” (App. Br. 45.) The Examiner responds by noting that
Orbital overly restricts Lebens and points out that Lebens discloses that LED
lights are useful for viewing and lighting tropical aquariums and that all the
references are directed to the same field of endeavor – lighting aquariums.
(Ans. 28 (citing Lebens at col. 6, ll. 31-53).) Lebens is generally directed to
LED illumination and controlling an output LED spectrum. (Lebens,
Abstract.)
Orbital’s argument that the ‘008 patent is directed broadly “to the
problem of marine habitat lighting” (App. Br. 45), if accepted, means that
Lebens is analogous art because Lebens specifically provides marine habitat
lighting. Moreover, while the ‘008 patent discloses promoting marine
growth and controlling the spectral content of LED light (see col. 1, ll. 19-
24), claim 2 does not require promoting marine growth and only requires
marine lighting, as Orbital’s argument indicates. Also, the preambular
phrase, directed to marine habitat and lighting, constitutes an intended use of
the product and does not preclude the claimed system from other uses.
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Further, the ‘008 patent generally discusses prior art systems that
“may or may not be portable or submersible systems that direct light at
specific marine features.” (See ‘008 patent, col. 2, ll. 12-13.) In addition to
teaching such portable or submersible LED systems for viewing marine
features, Lebens also addresses another one of the ‘008 patent problems -
controlling the spectral output light content by controlling individual LEDs.
(See Lebens Abstract, col. 7, ll. 46-57; col. 6, ll. 31-39; Figs. 1-8; Ans. 50.)
As such, as with Ignatius, skilled artisans would have considered
Lebens as analogous to other marine lighting or terrestrial lighting systems
for promoting growth or viewing. See Wyers v. Master Lock Co., 616 F.3d
1231 (Fed. Cir. 2010) (proposing an expansive and flexible approach to
analogous art). “’[I]t is but an evenhanded application to require that those
persons granted the benefit of a patent monopoly be charged with an
awareness’ of that technology.” Dann v. Johnston, 425 U.S. 219, 229
(1976) (quoting Graham v. John Deere Co. 383 U.S. 1, 19 (1966)); In re
Kahn, 441 F.3d 977, n.2, 987 (Fed. Cir. 2006) (discussing analogous-art test
and citing Dann v. Johnston).
Claim 15 is a method claim which is similar in scope to dependent
claim 2. Orbital relies on the unavailing arguments presented against the
rejection of claim 1 and the arguments about Tomofuji’s Abstract not
showing sufficient evidence as to Tomofuji’s cooling system and light bulbs.
(See App. Br. 50-51.) As indicated, no factual dispute exists about that
system. It is a simple, well-known type of fan-based marine tank cooling
system according to Orbital’s expert and as Figures 1-8 in Tomofuji verify.
Orbital’s remaining arguments are similar to those asserted against the
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rejection of claim 1 and are unavailing for the reasons discussed supra. (See
App.Br. 51-56.)
Claims 16-18 depend from claim 15. Orbital relies on its unavailing
arguments against the rejection of claim 15 and also those directed against
combining Lebens discussed supra. (See App. Br. 57-58.)
Based on the foregoing discussion, Orbital has not shown error in the
rejections of claims 2 and 15-18.
IV. Claim 3 - Based on Tomofuji, Kuiper, Ignatius, and Masuda, or
Tomofuji, Kuiper, Ignatius, and Masuda.
Claim 3 requires an LED light source mounted in a water proof
housing. In addition to relying on similar arguments addressed with respect
to claim 1, Orbital also argues that Masuda “teaches to sealed-environment
space applications . . . [and] does not relate to open top marine habitats.”
(App. Br. 46.) The Examiner does not employ Masuda to teach an open top
environment, but reasons that Masuda “is directed to a LED lighting system
for a fish tank wherein the LEDs are adjacent the water. Masuda further
teaches the advantages of waterproofing . . . to protect the LEDs and
circuitry from water damage.” (Ans. 29.)
Orbital also maintains that Masuda generates little heat. (Reply
Br. 27.) The Examiner only employs Masuda to teach LED waterproofing.
Also, while Masuda also recognizes that the tank is “dimly lit without a
change in temperature [which] can be maintained” (Masuda ¶ 16), skilled
artisans would have recognized, on this record, a trade-off between lighting
and heat and sought to regulate temperature under high lighting conditions.
Based on the foregoing discussion, Orbital has not shown error in the
rejection of claim 3.
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V. Claims 4-6 – Based on Tomofuji, Kuiper, and Ignatius, or Tazawa,
Tomofuji, and Ignatius
Orbital primarily relies on the unavailing arguments addressed supra
to allege error in the rejection of these claims. (See App. Br. 47-58.) While
Orbital repeats limitations of claims 4-6, Orbital does not explain how the
Examiner erred.
Claim 4 recites “wherein the LED light source, when activated, is
sufficient to support marine growth.” Orbital also maintains that Kuiper and
Tazawa generate little heat. (See App. Br. 47.) However, the purpose of at
least Tomofuji, Kuiper, Tazawa, and Ignatius, as noted supra, is to promote
marine or other growth, thereby suggesting the LED intensity or power
implicitly recited in claim 4. (See Ans. 48-49.)
Claim 5 recites “wherein the LED light source includes at least one of
. . . discreet LEDs.” Orbital relies on the unavailing argument that Kuiper
teaches away from cooling an LED light source. (App. Br. 48.) As noted
supra, Kuiper teaches temperature control of LEDs as does Ignatius. The
prior art of record, including an array of LEDs, necessarily discloses or
suggests “at least one of . . . discreet LEDs.” (See Ans. 49 (citing Kuiper at
7, ll. 23-29).)
Claim 6 recites a certain spectral range for the LED light source.
Orbital relies on the unavailing arguments presented against the rejection of
claim 1 discussed supra. The prior art of record teaches tailoring the LED
spectrum to advance marine growth. (See Ans. 49.)
Based on the foregoing discussion, Orbital has not shown error in the
rejection of claims 4-6.
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VI. Claim 7 – Based on Tomofuji ,Kuiper, Ignatius, and Janssen, or
Tomofuji, Tazawa, Ignatius, and Janssen.
Claim 7 requires the capability to adjust the light intensity from 0 to
1000 micro mols per square meter per second. Orbital relies on the
unavailing argument discussed supra that Ignatius and Janssen each require
the lights to be outside the aquarium and require protection. Such an
argument ignores the combination which suggests protected lights, including
LEDs, inside an aquarium to promote marine growth and visibility. Ignatius
and Janssen each show that skilled artisans would have recognized varying
the intensity of LEDs to suit the desired organism growth, as the Examiner
finds. (See Ans. 18-19; 55; Janssen discussion section 2.2 and discussion
supra; Ignatius, Abstract, col. 3, ll. 1-6 and B supra.)

VI. Secondary Considerations
Orbital asserts secondary and other considerations of nonobviousness,
citing the Curran Declaration. (See App. Br. 58-61.) The Examiner
persuasively finds that Orbital’s showings are not sufficient to overcome the
rejections. (See Ans. 37-42.)
As the Examiner recognizes, Curran does not produce evidence
showing that allegedly infringing products satisfy the claims. As such,
Curran does not show sufficient nexus to establish commercial success.
(See Curran Decl. ¶ 32.)
Curran relies on several internet blogs or articles by “[h]obbyists as
well as others in the marine lighting industry” (Curran Decl. ¶ 34) to allege
long-felt need, general skepticism, lack of enablement, and other indicia of
non-obviousness. (See id. at ¶¶ 8, 24 -40.) However, Curran does not show
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that such aquarium hobbyists were skilled artisans who had sufficient
resources and were actively seeking a solution to LED marine lighting and
cooling, or that their unchallenged statements are probative.
As one example, as to skepticism, Curran testifies about an internet
blogger who states that generally, LEDs did not produce “‘enough
energy . . . to grow anything.’” (Curran ¶ 34 (quoting Exhibit Hat
PFO006020.) However, the discussion is about a “night-light” (Exhibit H,
PFO006020), and another attached article states that “the benefits are
amazing” for marine aquaria even if there is “the high upfront cost (see Ex.
B, PFO006006, PFO006012).
Curran also testifies that the lack of LED viability was based on “price
and efficiency.” (Curran ¶ 34 (citation omitted).) Curran similarly testifies
about the “lack of success in finding reasonable prices for all LEDs.”
(Curran ¶ 18.) These uncorroborated statements at most might show a lack
of funding by hobbyists, but mere cost, without more, does not show
skepticism or long-felt need or any other indicia of nonobviousness.
Tazawa, Kuiper, and Janssen directly contradict any assertions about
skepticism associated with employing LEDs to promote growth in aquaria.
(See Ans. 40, 65.) In another paragraph, Curran testifies about a blogger
who attended a conference by “a marine lighting expert,” Dr. Joshi, who the
blogger apparently refers to as “Sanjay.”
6
According to the blogger,
Sanjay’s “measurements showed it to be on par with a PC light. So pretty
much softies and some LPs only.” (See Curran ¶36 and Ex. Q attached to the
declaration (emphasis added).) Curran does not explain what a PC light is,

6
Though it is not clear from Curran’s testimony, Sanjay’s LED systems
apparently came into existence after the date of invention.
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but this reference to “softies and LPs” shows that LEDs, at some power level
of course, do support the growth of softies and LPS corrals. (See Ex. Q at
4.) As another example, Curran cites to Exhibit R (see Curran Decl. ¶ 36) to
allege that “Sanjay” thinks LED lighting is years away. However, Exhibit
R, apparently another internet blog posting, notes that “[t]he 250W [LED]
version is adequate for LPS, Softies of all kinds, clams to a depth of 24” and
SPS that are elevated to within 6” of the top.” (Ex. R, see 07-17-2007, 07:27
PM posting.) In other words, apparently softies, LPs, and clams are types of
aquatic growth which can be grown with LEDs, contrary to Curran’s
testimony.
The blogger also discusses “SPS health/growth” and notes that “[i]t’s
up to us hobbyists to experiment with various corals at different depths . . . .
In my experience most SPS corals do better in the top 12 to 14” range.
Some like Monty caps can be deeper.” (Ex. R, posting dated 07-24-02007,
09:39 A.M.) Another posting states that “no one can make anything but
speculations” about Sanjay’s products. (See Ex. R, posting dated 7-25-2007
10.01 A.M.) The posting speculates that “Sanjay is basing his theory on
results he’s seeing from his original PFO prototype 250W G series, a 24”
model without a computer control. It’s really basic.” (Ex. posting dated
R 07-25-2007, 10:01 AM. Posting.)
As the Examiner recognizes, the prior art of record directly
contradicts the Curran Declaration and shows that LEDs were available to
promote plant growth and that they require cooling. Curran explains that
Ignatius teaches away from marine growth systems because such systems
“provide red wavelengths of light to terrestrial plants.” (Curran ¶ 37.)
Despite Curran’s reliance on the‘008 patent for this assertion, the
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‘008 patent does not support the testimony: “The particular quantity of each
type of LED in each light engine 19 depends on the marine life to be
sustained,” and “to sustain certain species of marine plant life, each light
engine might include about 50% red emitting LEDs and at least about 30%
blue emitting LEDs.” (‘008 patent, col. 5, ll. 5-9 (emphasis added).) In other
words, red light is not required for all marine species.
In any event, Ignatius discloses using up to 300 or more “tightly
packed” LEDs, in the 620-680 or 700-760 nanometer wavelength range,
or in the 400-500nm wavelength range, with intensity in the 0 to
2000 micromols per second per meter. (Ignatius, col. 3, l. 67; col. 4, ll.11-
15.) Claim 1 requires “about 380nm to about 690nm” and claim 7 recites
from about 0 to 1000 micromols per second per meter. Even though the
Examiner relies on Ignatius to show cooling of LEDs, Curran fails to explain
why skilled artisans would have deemed Ignatius’s LED system or other
systems of record to be incapable of promoting marine growth and fails to
show a teaching away of using LED lights to promote growth. Given the
prior art of record, skilled artisans would have been able and motivated to
adjust the LED wavelengths to suit the intended purpose of growing a
particular plant or coral species.
Curran also testifies that skilled artisans did not know that heat
generated from an “LED chip needs to be managed differently from
managing heat generated by fluorescent” lights and “thus did not realize that
a cooling system particularly designed for use with LEDs is required to
dissipate heat.” (Curran ¶ 22.) However, contrary to Curran’s similar
testimony (Curran ¶ 25), the ‘008 patent provides scant details about its fan
based cooling system or the amount of heat emanating from its LEDs.
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Curran testifies that “[e]xtraction of heat improvement requires
improvement in the speed of natural convention with the structure via
appropriate use and placement of fans or other cooling means, unlike
Tomofuji’s simple air exchange.” (Curran ¶ 25.) However, Curran fails to
explain how the ‘008 patent creates better air exchange than Tomofuji’s air
exchange system. Curran’s testimony that “[t]ypically, LED systems require
cooling fins or a metal board . . . which may be used in conjunction with
cooling fans” (Curran ¶ 25) merely describes the prior art cooling fin or
metal board LED mounting arrangement and fan cooling thereof which
Ignatius discloses and which suggests similar cooling of Kuiper’s closed
space temperature regulated aquatic LED strips or panels. (See supra A, B;
Ignatius Abstract.)
Commercial success cannot be established based on what is known in
the art. Orbital has not established a nexus to any commercial success. See
Tokai Corp. v. Easton Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011)
(“If commercial success is due to an element in the prior art, no nexus
exists.”); Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed.
Cir. 2006) (“[I]f the feature that creates the commercial success was known
in the prior art, the success is not pertinent.”).

Summary
The Examiner’s responses and findings with respect to the claims on
appeal are adopted and incorporated herein by reference. Orbital has not
shown error in the SNQ determination or the rejections of claims 1-7 and
15-18.

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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 fluorescent lights “only
unites old elements” with no change in function of Tomofuji’s marine tank
and thereby constitutes a “principal reason” for finding the ‘008 patent
claims 1-8 obvious. See KSR, 550 U.S. at 416.

AFFIRMED

ak

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40
Patent Owner:

Dorsey & Whitney, LLP – Minneapolis
50 South Sixth Street
Suite 1500
Minneapolis, MN 55402-1498
Attn: Patent Prosecution Docketing Dept.
Intellectual Property Practice Group – PT/23
rd
FL

Third Party Requester:

Maurice U. Cahn
Cahn & Samules, LLP
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Suite 401
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