Ex Parte 7473008 et al

Patent Trials and Appeals Board

Mar 26, 2013

90011865 - (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.
90/011,865 08/17/2011 7473008 1046.0003 4300
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 2013-004264
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 REQUEST FOR REHEARING
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 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 of the
’008 Patent, US 7,473,008 B2, Marine LED Lighting System and Method
(Jan. 6, 2009). (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 propriety of the Examiner’s obviousness determination and
the Examiner’s determination of a substantial new question (SNQ) of
patentability. 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. 14-16.)
This appeal relates to another Board appeal, PTAB Appeal No. 2013-
004262, for which Orbital also seeks rehearing, involving another of
Orbital’s patents, US 7,220,008 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 ’008 patent describes a marine habitat LED
(light emitting diode) lighting system. (Dec. 1.)

1
Order Granting/Denying Request for Ex Parte Reexamination
(Sept. 27, 2011).
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

3
Figure 1 of the ’008 patent depicts a housing 10 covering marine
habitat 17 as shown below:

The housing includes air inlet vents 18 and fans 16. An LED array is
attached to the underside of housing 10 to light the marine habitat 17.
(See id.)
Obviousness
Orbital does not direct attention to a particular claim. Orbital
contends that the Board overlooked Orbital’s argument that “modifying
Tomofuji to use an LED lighting system . . . would render Tomofuji
unsatisfactory for its intended purpose and change its principle of
operation.” (Reh’g Req. 14.)
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.’” ( Id. (quoting Tomofuji Abstract).) Orbital also contends that “LED
lights . . . generate little heat,” so “Tomofui’s cooling system would not
obviously . . . prevent fire,” if used to cool LEDs. (Reh’g Req. 14.)
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

4
Orbital does not challenge the Board’s fact finding that “cooling LED
systems was well known in the art as evidenced by Ignatius’s teachings.”
(Dec. 20.) Orbital also does not challenge the Board’s reasoning and fact
finding that
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 which would require
cooling. . . . 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.)
(Dec. 22.)
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.) 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 purpose of
lighting and cooling.
Orbital also argues that the Board overlooked that “Ignatius teaches a
180 volt LED array that is preferably used in a modular housing, with a glass
cover.” (Reh’g Req. 15.) According further to Orbital, Ignatius’s LEDs
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

5
would not be “suitable for an open-top marine environment,” and the
Board’s determination that the claimed habitat is not open when the housing
is attached, overlooks that the claimed LEDs would be mounted inside the
housing and “fac[ing] an open top environment.” (See id.)
The Decision addresses similar arguments. (See Dec. 24-26.) Orbital
does not assert that the claimed open top marine habitat precludes the LEDs
from having some type of a protective covering, including a glass panel of
the type that Ignatius discloses. (See Dec. 25.) Some of the disclosed
embodiments in the ’008 Patent are submersible. (See ’008 Patent, col. 5,
ll. 10-55.) Further, dependent claim 3 even requires the “housing” to be
“waterproof.”
Even if the claimed “LED light source” precludes some type of
protection, the Decision agrees with the Examiner that skilled artisans
probably would not have placed LEDs in the water, as Orbital notes (Reh’g
Req. 15), and the Decision further notes that Ignatius’s LEDs are in an open-
vent system (Dec. 25-26). Contrary to Orbitals’s teaching away argument
premised on “a clear risk of exposure to the water” (Reh’g Req. 15), skilled
artisans would not have avoided using LEDs above the water, inside the tank
(with or without some type of added protection, including a glass cover). As
the Decision notes, lights were being used routinely in tanks, and “Ignatius
and Kuiper both suggest that an LED strip, panel, or substrate, easily could
have been employed in place the fluorescent lamps of Tomofuji.” (See
Dec. 26.)
Consequently, Orbital fails to show an overlooked point concerning
obviousness.

Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

6
SNQ
Orbital characterizes the translation as “additional art” (Reh’g Req. 4)
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. 5, 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).
(Dec. 6.)
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 Reh’g
Req. 2-9; Dec. 8 (citing Ans. 3; Reply Br. 10-11).) Orbital also argues that it
did not waive the SNQ issue, as the Decision and the Examiner find, because
Orbital did not know the Examiner used a translation “until the appeal.”
(Reh’g Req. 4.)
As the decision in the above-noted related ’4262 proceeding finds, which the
underlying Decision cites (Dec. 1), the record does not support Orbital’s lack
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

7
of knowledge theory. Orbital acknowledges that the Examiner’s ’4262 SNQ
Order in the related proceeding “indicates that an English translation of
Tomofuji is attached to the Order.” (’4262 Dec. 8.)
The applicable portion of the ’4262 SNQ Order from the related
proceeding follows:
2

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 ’4262 SNQ Order 2.)
As the passage shows, the ’4262 SNQ Order in the related case,
involving the same attorney and Examiner, indicates that the Examiner
relied upon a translation. 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. 4-5.) These
factors, independently or together, should have indicated that the Examiner
relied upon a translation, and that Orbital should have been aware of that.
Orbital did not ask the Examiner for a translation after receiving the
’4262 SNQ Order or the SNQ Order in this case. In the instant case, similar
to the related case, Orbital asserted in its Reply Brief that “‘the record is in

2
Order Granting/Denying Request for Ex Parte Reexamination
(Sept. 8, 2011) (Reexam. Cont. No. 09/011,864).
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

8
fact unclear as to whether a translation was to be provided.’”
(Dec. 8 (quoting Reply Br. 11).)
In other words, Orbital knew or should have known that the
translation was an issue as soon as the SNQ Order was issued—if “the
record is unclear as to whether a translation was to be provided,” Orbital
should have clarified it, if it indeed was a problem. As the Decision notes,
“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.” (Dec. 8.) The Board reasons as
follows: “Orbital does not apprise the Board of any authority for granting
relief based on a lack of diligence on its part.” (Id.)
Orbital now argues that the Board overlooks that it was diligent and
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.) However, as noted supra,
Orbital itself says it was “unclear as to whether a translation would be
provided.” (Reply Br. 11.) If it was unknown whether a translation would
be provided, Orbital should have clarified the unknown, rather than wait to
raise it as an appeal issue. Further, as noted, the related ’4262 SNQ Order,
and other factors cited by Orbital, should have indicated that the Examiner
used a translation, because the same or similar issues are involved in the two
cases.
Orbital essentially argues that because it was unsure of whether it
would be supplied a translation, the SNQ Order should be vacated. The
reexamination procedure began over two years prior. As the Decision
explains, Orbital’s tactical “procedure violates the procedure required by the
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

9
SNQ Clarification.” (Dec. 8.) 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.
Orbital also argues that “if the Office relies on such a document,
moreover, but does not disclose it to patentee, then it is manifestly unfair to
argue that the issue was waived for appeal.” (Reh’g Req. 5.)
3
However, the
record shows that the Examiner did disclose it to Orbital, and that Orbital
chose to proceed to appeal to ask the Board to vacate the SNQ Order. In
other words, Orbital chose not to re-open prosecution before the Examiner.
As the Decision notes, Orbital specifically waives a re-open and remand in
its Appeal Brief. According to Orbital, “[n]or 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.” (App. Br. 65 (partially quoted in Dec. at 18) (emphasis added).)
After Orbital filed the Appeal Brief (August 16, 2012), the Examiner
contacted “Appellant . . . on September 4, 2012 to discuss the procedure of
how to make the translation of record as discussed below. Appellant agreed
to [have the Examiner] add the translation as an attachment to an

3
The Decision does consider the SNQ issue and other related issues in the
alternative to the determination of waiver. (See Dec. 18.)
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

10
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. 27, 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.
Orbital elected to wait for the translation in the Answer. The record
reflects that the Examiner added the translation and abstract to the Answer
as an attachment, because Orbital declined the Examiner’s offer to re-open
prosecution. Orbital also “does not dispute that any number of different
translations of the Tomofuji reference are available.” (App. Br. 10.)
After the Appeal Brief and Examiner Interview Summary, but before
the Answer, Orbital filed a three-page Interview Summary (October 2,
2011). In its Interview Summary, 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 . . . .

Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

11
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.

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 before the Examiner. (See Dec. 18.)
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 denied the Examiner’s offer, Orbital repeats the Examiner’s
statements in the Interview Summary and in the Answer. Orbital then states
that its
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

12
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 Reply Brief indicates that Orbital “explicitly”
maintained its appeal to the Board. 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 would constitute new grounds of rejection, and should
be treated accordingly.” However, 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, after filing its Appeal Brief, before the
Examiner prepared the Answer, Orbital rejected the Examiner’s 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 and in the Decision.
Orbital thereby waived the right to remand to address due process or fairness
issues that would have been mooted by accepting the explicit offer.
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
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

13
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 “disputes that the
machine translation provided with Examiner's Answer can be relied upon in
maintaining any final rejection of the claims, 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 Br. 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. Orbital knew about the translation
prior to its appeal, because it raised the issue in its Appeal Brief. (See App.
Br. 65.) 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).)
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

14
The Examiner and the Board also find that Orbital and its expert, Mr.
Curran, knew what Tomofuji taught. (See Dec. 13 (quoting the Answer,
Orbital’s Response, and the Curran Declaration).) Orbital now maintains
that the Examiner and Orbital do not agree on what Tomofuji teaches or
discloses. (Reh’g Req. 10.) If that is correct, then this points further to why
Orbital should have raised the translation/SNQ issue before the Examiner
and asked to have prosecution re-opened.
To support its argument about 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. 14).) Orbital does not
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 1-3 depict a
housing, a light source, and a cooling system, over a tank. (See Dec. 5-6.)
Orbital cites the Board’s finding that in Tomofuji, “the ‘light’ 2 simply
includes the housing cover 3 and the lamps 4 therein,” and the “Examiner’s
reference to the light 2 as a housing.” (See Reh’g Req. 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 is a part of the light fixture 2 and 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
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

15
¶ 20) and “covering 3 . . . for this light 2” (id. at ¶ 14). 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, a lack of notice, or a
deficient rejection.
The Examiner’s SNQ Order refers to a “housing 2 for a lighting
system 4.” (SNQ Order 8.) The Answer refers to “housing comprising
items 2 and 3.” (Ans. 48.) 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 3. Regardless of the
particular numeral cited, Tomofuji’s Figures 1-3 show a housing cover 3
(part of a light fixture 2) 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 specificity, the Board’s or the
Examiner’s findings as to what Tomofuji materially teaches.
Orbital similarly maintains that “the translation that was ultimately
provided is not consistent with the Order;” however, this generic assertion
fails to address the plain teachings in the figures, which portray lamps within
a housing, or explain why the translation or Abstract is materially incorrect
or inconsistent with the Order. (See Reh’g Req. 11.) Claim 1 broadly
recites “a housing connectable to the top edge to substantially cover the open
top, the housing including an inner side facing the open top . . . and an LED
light source mounted to the inner side of said housing.” Orbital fails to
explain how any alleged inconsistency shows that Tomofuji fails to teach or
Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

16
suggest, in combination with the applied art, these broadly recited lighting
and housing features.
“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 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

Appeal 2013-004264
Reexamination Control Nos. 90/011,865
Patent 7,473,008 B2

17
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

ak

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
1100 17
th
Street, NW
Suite 401
Washington, DC 20036