NOTE: This disposition is nonprecedential.
United States Court of Appeals
for the Federal Circuit
______________________
IN RE ORBITAL TECHNOLOGIES CORPORATION
______________________
2014-1298, -1299
______________________
Appeals from the United States Patent and Trade-
mark Office, Patent Trial and Appeal Board in Reexami-
nation Nos. 90/011,864 and 90/011,865.
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Decided: January 20, 2015
______________________
HEATHER D. REDMOND, Dorsey & Whitney, LLP, of
Minneapolis, Minnesota, argued for appellant. With her
on the brief was NATHANIEL P. LONGLEY.
JEREMIAH S. HELM, Associate Solicitor, United States
Patent and Trademark Office, of Alexandria, Virginia,
argued for appellee. With him on the brief were NATHAN
K. KELLEY, Solicitor, THOMAS W. KRAUSE, Deputy Solici-
tor, and FARHEENA Y. RASHEED, Associate Solicitor.
______________________
Before REYNA, CLEVENGER, and WALLACH, Circuit Judges.
CLEVENGER, Circuit Judge.
Patent owner Orbital Technologies Corporation (“Or-
bital”) appeals from two decisions of the Patent Trial and
2 IN RE ORBITAL TECHNOLOGIES CORP.
Appeal Board (“Board”) of the United States Patent and
Trademark Office (“PTO”) affirming the examiner’s
rejection of all claims of two related patents for obvious-
ness under 35 U.S.C. § 103(a). Ex parte Orbital Techs.
Corp., No. 2013-4262, Reexamination No. 90/011,864,
2013 WL 1289496 (P.T.A.B. Mar. 26, 2013) [hereinafter
’018 Board Decision]; Ex parte Orbital Techs. Corp., No.
2013-4264, Reexamination No. 90/011,865, 2013 WL
1289497 (P.T.A.B. Mar. 26, 2013) [hereinafter ’008 Board
Decision]. The same examiner conducted both reexamina-
tions. We consolidated the cases for argument and now
address them together. In re Orbital Techs. Corp., No.
2014-1298 (Fed. Cir. Oct. 27, 2014) (order consolidating
for oral argument); In re Orbital Techs. Corp., No. 2014-
1299 (Fed. Cir. Oct. 27, 2014) (same).
Orbital challenges both the examiner’s use of a ma-
chine translation of the key prior art reference that was
not provided to Orbital before the close of reexamination
and the obviousness rejections.
We have jurisdiction under 28 U.S.C. § 1295(a)(4)(A).
Because Orbital waived any claims arising from the
examiner’s use of the machine translation when it did not
accept his offer to reopen reexamination with the transla-
tion on the record, and because the Board did not err in
finding that the patents’ claims would have been obvious
to a person of ordinary skill in the art, we affirm.
BACKGROUND
I
This appeal arose from the separate ex parte reexam-
inations of two related patents, Reexamination No.
90/011,864 of U.S. Patent No. 7,220,018 B2 (filed Dec. 15,
2004) (“the ’018 patent”) and Reexamination No.
90/011,865 of its continuation U.S. Patent No. 7,473,008
B2 (filed Mar. 22, 2007) (“the ’008 patent”). Both patents
are entitled “Marine LED Lighting System and Method”
IN RE ORBITAL TECHNOLOGIES CORP. 3
and are directed to a method and apparatus of lighting an
open-top marine habitat using an LED lighting system.
A. The ’018 Patent
The ’018 patent issued on May 22, 2007 from an ap-
plication that claims priority to December 15, 2003. It has
eight claims, of which claims 1 and 5 are independent.
Claim 1 is representative of the issues on appeal:
1. A combination marine habitat and lighting sys-
tem therefor comprising:
a marine habitat having an open top defined by a
top edge and
a lighting system including:
a housing connectable to said top edge to substan-
tially cover said open top, said housing further in-
cluding an inner side facing said open top when
said housing is connected to said top edge and an
opposite outer side;
an LED light source mounted to the inner side of
said housing, said LED light source comprising at
least one light engine having a plurality of indi-
vidual LEDs capable of providing light at a wave-
length from about 380 nm to about 690 nm;
a power supply sufficient to drive said LEDs;
a controller connected with said power source for
controlling the activation status and the intensity
of one or more of said individual LEDs; and
a cooling system provided in said housing.
B. The ’008 Patent
The ’008 patent issued on January 6, 2009 from a con-
tinuation of the application that led to the ’018 patent and
claims priority to the same date. A terminal disclaimer
limits it to the ’018 patent’s term.
4 IN RE ORBITAL TECHNOLOGIES CORP.
The ’008 patent is subject to a prior ex parte reexami-
nation, Reexamination No. 90/009,662, in which the
examiner proposed to reject all eighteen issued claims as
anticipated or obvious. Ex Parte Reexamination Non-Final
Office Action, Reexamination No. 90/009,662 (Nov. 16,
2010). In response, the patent owner amended independ-
ent claims 1 and 15 to add a limitation to “cooling means
for dissipating heat generated by the LED light source,”
and claims 2 and 8 to add limitations not relevant here.
The examiner found claims 1-7 and 15-18 patentable as
amended based on the conclusion that the prior art did
not disclose or make obvious the cooling means limitation.
Notice of Intent to Issue a Reexamination Certificate,
Reexamination No. 90/009,662 (July 1, 2011). The exam-
iner also rejected claims 8-14, which the patentee then
cancelled.
Following the prior reexamination, the ’008 patent re-
cites claims 1-7 and 15-18, of which claims 1 and 15 are
independent. Claim 1 is representative:
1. A combination marine habitat and lighting sys-
tem, 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 substan-
tially cover the open top, the housing including an
inner side facing the 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
the housing, the LED light source comprising at
least one light engine having a plurality of indi-
vidual LEDs capable of providing light at a wave-
length from about 380 nm to about 690 nm.
IN RE ORBITAL TECHNOLOGIES CORP. 5
II
A. Tomofuji
The key prior art reference is Japanese Patent No. 9-
308409 A to Tomofuji, published December 2, 1997
(“Tomofuji”). Tomofuji teaches a cooling device for an
aquarium lighting system.
Its original text is in Japanese with accompanying
numbered figures. Two translations of its text are rele-
vant in these proceedings: an English translation of its
abstract (“the Abstract Translation”), and a machine
translation of its full text (“the Machine Translation”).
The Abstract Translation describes Tomofuji’s teach-
ing as follows, with reference to the accompanying Figure
1:
PROBLEM TO BE SOLVED: To provide the sub-
ject cooling device so designed that, even if the
temperature inside the cover of an illuminator
mounted on an aquarium fish basin rises abnor-
mally high due to e.g. lighting of an illuminating
lamp, the heated air is forcedly exhausted out of
the cover to always keep the temperature inside
the cover so as to prevent illuminator damage
and/or fire accident.
SOLUTION: This cooling device has such scheme
that the upper surface of an illuminator cover 3
mounted on the top of an aquarium fish basin 1 is
provided with an air releasing portion 11 compris-
ing many vents 12, the reverse side of the air re-
leasing portion 11 is equipped with a fan motor,
and the heated air generated inside the cover 3
due to e.g. lighting of an illuminating lamp is ex-
hausted through the air releasing portion 11 out
of the clover 3 by the revolution of the fan motor.
6 IN RE ORBITAL TECHNOLOGIES CORP.
Tomofuji’s full Japanese text includes this and seven
other figures.
The Machine Translation is a full-text translation of
Tomofuji that was done by a computer and is available for
free online through the Japan Patent Office. See Industri-
al Property Digital Library, http://www.ipdl.inpit.go.jp/
homepg_e.ipdl (search the Patent and Utility Model
Gazette Database for kind code “A” and number “1997-
308409”). It opens with a disclaimer about its accuracy
and does not translate all words in the patent, instead
substituting a placeholder. The Machine Translation is
frequently ungrammatical and poorly punctuated, which
renders its teaching difficult to follow.
B. Other References
Six other prior art references were relied upon below:
(1) Kuiper et al., PCT Application WO 91/18970 (Dec. 12,
1991) (“Kuiper”); (2) Ignatius et al., U.S. Patent No.
5,278,432 (filed Aug. 27, 1992) (“Ignatius”); (3) Lebens et
al., U.S. Patent No. 6,305,818 (filed July 28, 2000); (4)
IN RE ORBITAL TECHNOLOGIES CORP. 7
Janssen et al., Photosynthetic Efficiency of Dunaliella
Tertiolecta Under Short Light/Dark Cycles, 29 Enzyme &
Microbial Tech. 298-305 (2001); (5) Tazawa et al, Japa-
nese Patent No. H10-162609 (published June 19, 1998);
and (6) Masuda et al., Japanese Patent No. 6-319410
(published Nov. 22, 1994), which is cited only in the
reexamination of the ’008 patent.
On appeal Orbital challenges Board conclusions based
on Kuiper and Ignatius. Kuiper describes “a method of
cultivating a phototrophic aquatic organism in an aque-
ous environment” in which illumination provides energy
to the organism. Kuiper at 1 ll.1-7. It teaches that LEDs
are a preferred light source because they “save an enor-
mous amount of energy in comparison with normal
sources of artificial light,” id. at 4 ll.14-19, and that they
can be arranged in many configurations and used either
inside or outside the aqueous environment, id. at 7 ll.14-
29.
Ignatius is directed to an “apparatus for providing ra-
diant energy to enhance and test plant growth” that
preferably uses LED arrays stored in modular housings.
Ignatius at col.1 ll.5-10. It teaches that LEDs and fluores-
cent lamps can be substituted for each other, id. at col.3
ll.34-38, and describes LEDs’ advantages over fluorescent
lamps, including that they achieve “minimal heat output”
for the amount of light provided, id. at col.2 ll.62-65.
Ignatius also teaches the use of “air vents” and an “inter-
nal fan” as part of a system that dissipates heat generated
within the housing by the LED array. Id. at col.4 l.64-col.5
l.12.
III
A. Ex Parte Reexamination
Two anonymous requests for ex parte reexamination
were filed on August 17, 2011, one seeking reexamination
of claims 1-8 of the ’018 patent, and the other reexamina-
8 IN RE ORBITAL TECHNOLOGIES CORP.
tion of claims 1-7 and 15-18 of the ’008 patent. Every
substantial new question of patentability (“SNQ”) and
ground for rejection in the requests relied on Tomofuji in
combination with other references.
Neither request provided an English translation of
Tomofuji’s full text. Instead, the requests included the
Abstract Translation and Tomofuji’s original Japanese
text, with accompanying figures. They discussed Tomofuji
using only these materials.
On August 29, 2011, the examiner obtained the Ma-
chine Translation of Tomofuji’s full text from the Japan
Patent Office’s website, which he later acknowledged
relying on throughout the proceedings. The examiner then
found that both requests raised an SNQ as to all chal-
lenged claims and accordingly instituted an ex parte
reexamination of each patent.
The SNQ determination for the ’018 patent stated
that an “English Translation [of Tomofuji] is provided
herewith,” Order Granting Request for Ex Parte Reexami-
nation, Reexamination No. 90/011,864 (Sept. 8, 2011). The
SNQ determination for the ’008 patent, which issued
second, did not include this statement. The Machine
Translation was not attached to either determination, and
they do not otherwise directly reference Tomofuji’s full
text. 1 Orbital did not challenge either SNQ determina-
tion.
The examiner then issued Non-Final Rejections re-
jecting all claims under reexamination as obvious over
Tomofuji in combination with other references. For sup-
1 Both SNQ determinations discuss Tomofuji by cit-
ing only to its figures. They name parts of the figures that
the Abstract Translation does not define—the “housing 2,”
“light sources 4,” and “cooling fan 21”—without explaining
the names’ source.
IN RE ORBITAL TECHNOLOGIES CORP. 9
port the examiner cited specific paragraphs of Tomofuji’s
full text as well as its figures. 2
Orbital traversed all rejections. Its response in the
’018 patent’s reexamination “note[d] that the Office Action
relies on paragraphs 0001 to 0006 for rejections and no
translation of these paragraphs has been made available.”
Orbital did not otherwise discuss the examiner’s use of
Tomofuji’s full text.
The examiner then issued a Final Rejection of all
claims in both reexaminations. When discussing Tomofuji,
he once again cited its full text and figures.
B. Appeal to the Board
Orbital appealed both reexaminations to the Board on
June 20, 2012. In addition to challenging the obviousness
rejections, its appeal briefs noted that neither the reques-
tor nor the examiner had provided it with a translation of
Tomofuji’s full text. Orbital argued for the first time that
these omissions rendered both the SNQ determinations
and the rejections invalid.
On September 4, 2012, the examiner and counsel for
Orbital discussed the translation’s omission. The examin-
2 In the action for the ’018 patent, the examiner
frequently cited paragraphs 1 through 6 of Tomofuji’s text
as teaching a marine habitat and lighting system de-
signed to prevent overheating the water, and once re-
ferred to paragraph 6 as teaching means to maintain the
water at an appropriate temperature. In the action for the
’008 patent, the examiner several times cited paragraph
15 as showing cooling means by which a fan pushed
heated air out of the housing, and paragraph 3 as teach-
ing that the light source can be set at a level sufficient to
support marine growth.
10 IN RE ORBITAL TECHNOLOGIES CORP.
er filed an interview summary describing their conversa-
tion as follows:
Mr. Longley was telephoned regarding a proce-
dural oversight in not providing a translation of
the Tomofuji reference. This translation was in-
advertently not provided to Patent Owner or
placed into the file history even though one was
obtained by Examiner during prosecution. Exam-
iner asked Mr. Longley as a courtesy 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 rec-
ognized it was within the discretion of the PTO to
re-open prosecution.
In its own interview summary, Orbital did not dispute
that the examiner had offered to reopen the reexamina-
tions, and did not argue that it had accepted. Instead,
Orbital repeated that reopening reexamination was
within the examiner’s discretion. The examiner did not
reopen the reexaminations, and the Machine Translation
was attached to the Examiners’ Answer in each appeal.
The Board affirmed. In both cases, it first found that
Orbital had waived its argument that the Machine Trans-
lation’s omission from the record invalidated the decision
to institute reexamination. Patent owners may appeal
SNQ determinations to the Board “only if the patent
owner first requests reconsideration before the examiner,”
Clarification on the Procedure for Seeking Review of a
Finding of a Substantial New Question of Patentability in
Ex Parte Reexamination Proceedings, 75 Fed. Reg. 36357,
36357 (June 25, 2010), and the Board determined that
Orbital had failed to do so. ’018 Board Decision at *2-4;
’008 Board Decision at *2-4.
IN RE ORBITAL TECHNOLOGIES CORP. 11
The Board also affirmed the examiner’s obviousness
rejections. In both cases, the Board found that Tomofuji
teaches every element of the subject patent’s claim 1
except for the use of LEDs rather than fluorescent lamps
as the light source. ’018 Board Decision at *10; ’008 Board
Decision at *10. The Board adopted the examiner’s find-
ing that it would have been obvious to one of skill in the
art to replace Tomofuji’s fluorescent bulbs with an LED
light source. ’018 Board Decision at *11; ’008 Board
Decision at *11. It reasoned that Kuiper teaches the use of
LEDs in a combination marine habitat and lighting
system, while Ignatius teaches that LEDs can be cooled
with a fan system, ’018 Board Decision at *11; ’008 Board
Decision at *11, and that LEDs are interchangeable with
fluorescent lights, ’018 Board Decision at *13; ’008 Board
Decision at *14. The Board also agreed with the examiner
that a person of skill in the art would be motivated to
replace Tomofuji’s fluorescent bulbs with LEDs by Kui-
per’s teaching that LEDs are more energy-efficient than
fluorescent lighting. ’018 Board Decision at *11; ’008
Board Decision at *11.
The Board rejected Orbital’s argument that LEDs’
greater energy efficiency means they do not require
cooling: “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, like Tomofuji’s fluorescent light system
and Ignatius’s LED system.” ’018 Board Decision at *11
(citations omitted); see also ’008 Board Decision at 11.
Orbital petitioned for rehearing, which the Board de-
nied. Ex parte Orbital Techs. Corp., No. 2013-4262, Reex-
amination No. 90/011,864 (P.T.A.B. Oct. 30, 2013)
[hereinafter ’018 Rehearing Decision]; Ex parte Orbital
Techs. Corp., No. 2013-4264, Reexamination No.
12 IN RE ORBITAL TECHNOLOGIES CORP.
90/011,865 (P.T.A.B. Oct. 30, 2013) [hereinafter ’008
Rehearing Decision].
DISCUSSION
We review the Board’s legal conclusions de novo and
its factual findings for substantial evidence. In re Baxter
Int'l, Inc., 678 F.3d 1357, 1361 (Fed. Cir. 2012). A finding
is supported by substantial evidence if a reasonable mind
might accept the evidence as adequate to support the
finding. Id. (citing Consol. Edison Co. v. NLRB, 305 U.S.
197, 229 (1938)).
I
Orbital challenges the examiner’s consideration of the
Machine Translation. The Board found that “Orbital
chose not to re-open prosecution before the Examiner,”
instead preferring to continue its appeal. ’008 Rehearing
Decision at 9; see also ’018 Rehearing Decision at 10 (“The
record shows that Orbital chose the right to appeal to ask
the Board to vacate the SNQ Order, instead of re-opening
prosecution.”). We conclude that substantial evidence
supports this finding, and hold that Orbital waived any
claims it may have had arising from the fact that it was
not provided the Machine Translation.
Orbital agrees that the examiner offered to reopen the
reexaminations with the translation on the record, and
does not argue that it accepted this offer. Instead, Orbital
contends that the offer was conditional, requiring it to
waive all claims arising from the reexamination proceed-
ings thus far. Its evidence for this argument is that it told
the examiner it reserved its right to appeal the SNQ
determinations based on the prior art of record, and the
examiner did not reopen reexamination thereafter.
The record does not support Orbital’s contention that
the offer was conditional. Further, its argument confuses
agreeing to waive an otherwise valid claim with losing a
claim when it becomes moot. Had the examiner reopened
IN RE ORBITAL TECHNOLOGIES CORP. 13
the reexaminations with the translation, Orbital would
have lost its ability to appeal the earlier final rejections
based on the translation’s absence. Orbital could not have
avoided this result by bargaining with the examiner.
Substantial evidence supports the Board’s conclusion
that Orbital chose to appeal its existing claims to the
Board, rather than to return to reexamination with the
translation, and the examiner acted in accordance with
that choice. ’018 Rehearing Decision at 10; ’008 Rehearing
Decision at 11. Orbital did so knowing that the examiner
had used a translation it had not seen, and it cannot now
undo its decision. We therefore conclude that Orbital
waived any claims it might have had arising from the fact
that it was not provided with the Machine Translation of
Tomofuji before the close of reexamination.
II
On appeal Orbital presents three challenges to the
Board’s obviousness conclusions.
First, Orbital contends that substituting LEDs into
the system taught by Tomofuji would not result in the
claimed inventions, which require the lights to be
“mounted to” or “disposed on” the inner side of the hous-
ing, because Tomofuji’s Figures 1 through 3 show the
fluorescent lamps 4 mounted to a light reflector 7 that is
itself attached to the housing:
14 IN RE ORBITAL TECHNOLOGIES CORP.
Tomofuji figs. 2, 3. This argument reads the claims too
narrowly. Nothing in their language requires the lamps to
be attached directly to the housing without intervening
material.
Second, Orbital argues that a person of ordinary skill
in the art could not have adapted Tomofuji’s system to
cool LEDs, which its expert testifies generate heat not in
their bulbs but in their electronics. Tomofuji, like the
claimed inventions, teaches a system for dissipating heat
generated inside the housing generally. Compare Abstract
Translation (“the heated air generated inside the cover 3
due to e.g. lighting of an illuminating lamp” is forced out
by a fan) with ’008 Board Decision at *12 (the “cooling
system” limitation is a means-plus-function limitation
corresponding to “a fan/air cooled system that draws air
from the light system and exhaust[s it] from the light
housing”). Further, Ignatius teaches the use of a fan-
based system to cool LEDs. Ignatius at col.4 l.64-col.5 l.12.
Orbital therefore shows no reason to disturb the Board’s
conclusion that Tomofuji’s fan-based system could be used
to cool LEDs. See ’018 Board Decision at *10-11; ’008
Board Decision at *10-11.
Third, Orbital contends that the prior art does not
suggest the use of LED bulbs in Tomofuji’s invention
because LED bulbs generate less heat than fluorescent
bulbs. The Board considered and properly rejected this
argument. ’018 Board Decision at *11-12; ’008 Board
Decision at *11-12. Kuiper and Ignatius teach that LEDs
generate less heat than fluorescent bulbs, not that they
generate no heat at all. As the Board found, LEDs in
sufficient size or quantity would benefit from cooling, and
this is sufficient motivation for a skilled artisan to cool
them. ’018 Board Decision at *11; ’008 Board Decision at
*11-12.
Substantial evidence supports the Board’s determina-
tion that it would have been obvious for a person having
IN RE ORBITAL TECHNOLOGIES CORP. 15
ordinary skill in the art to use the LED bulbs taught by
Ignatius and Kuiper in the invention of Tomofuji. We
further hold that the Board’s conclusion that this would
be motivated by Kuiper’s teaching that LED lights are
more energy-efficient than fluorescent bulbs was support-
ed by substantial evidence.
III
Finally, Orbital maintains that the Machine Transla-
tion’s poor quality, untranslated words, and accuracy
disclaimer render it insufficient evidence of Tomofuji’s
teaching to support a prima facie case of obviousness.
At oral argument, the court expressed concern about
the dangers of relying on low-quality machine transla-
tions as evidence of the prior art, especially in cases
involving technologies more complex than the marine
habitats at issue here. Oral Argument at 18:27-21:28, In
re Orbital Techs. Corp., Nos. 2014-1298, -1299 (Nov. 5,
2014), available at http://www.cafc.uscourts.gov/oral-
argument-recordings. The PTO agreed that there may
well be cases where machine translations of the quality
shown in this case are inadequate evidence of a refer-
ence’s contents. Id. at 21:00.
Without blessing the use of machine translations in
all cases, we find that the Machine Translation used here
provided adequate evidence of Tomofuji’s contents be-
cause of the simplicity of the technology and the teachings
of Tomofuji’s figures. It was therefore sufficient to support
the examiner’s obviousness case.
CONCLUSION
For the reasons stated above, we affirm.
AFFIRMED
COSTS
No costs.