Ex Parte 7707828 et al

Patent Trial and Appeal Board

Apr 25, 2019

90013763 (P.T.A.B. Apr. 25, 2019)

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.
90/013,763 06/07/2016 7707828 17046207.11RXM0 4337
33222 7590 04/26/2019
JONES WALKER LLP
5TH FLOOR, FOUR UNITED PLAZA
8555 UNITED PLAZA BOULEVARD
BATON ROUGE, LA 70809
EXAMINER
DOERRLER, WILLIAM CHARLES
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
04/26/2019 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 LESEMEN DAVIS, LLC1
Appellant, Patent Owner
____________________

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Technology Center 3900
____________________

Before DANIEL S. SONG, BRETT C. MARTIN, and
JEREMY M. PLENZLER, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL

1 Linemen Davis, LLC is the real party in (Appeal Brief (“App. Br.”) 6).
2 Issued May 4, 2010 (“the ’828 Patent”).
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Claims 1–28 are subject to reexamination. The Patent Owner appeals
under 35 U.S.C. §§ 134(b) and 306 from a Final Rejection of claims 1–28.
We have jurisdiction under 35 U.S.C. §§ 134(b) and 306. The ’828 Patent
was the subject of litigation styled L.C. Eldridge Sales Co., Ltd, Leseman
Davis LLC v. Azen Manufacturing Pte., Ltd., et al., Civil Action No. 6:11-
cv-599-MHS (E.D. Tex.). We are informed that this litigation ended with a
judgment finding infringement, that the ’828 Patent was not proved invalid,
and damages were awarded, this judgment having been affirmed by the
Federal Circuit. App. Br. 6.
We also note that claims 1–15 and 39–52 of the ’828 Patent were the
subject of inter partes reexamination Control No. 95/002,024, Appeal 2014-
008672 (2015 WL 511183 (PTAB 2015)), and Appeal 2017-001767 (2017
WL 1632354 (PTAB 2017)). See also App. Br. 6. As a result of the inter
partes reexamination, claims 39–52 were canceled. 2017 WL 1632354 *12.
Although claims 1–15 were also reexamined in the earlier inter partes
reexamination, and rejected by the Board, the rejection of these claims was
withdrawn based on 35 U.S.C. § 317(b). 2017 WL 1632354 **1–2; see also
2015 WL 511183 *1. Claims 16–28 of the ’828 Patent were not reexamined
in the earlier inter partes reexamination proceeding.
As noted, in the present ex parte reexamination of the ’828 Patent,
claims 1–28 are reexamined and stand rejected by the Examiner. The Patent
Owner submits numerous new arguments in support of patentability of
claims 1–28. Because these arguments are new and have not previously
been submitted, they were not previously considered during the earlier inter
partes reexamination. In addition to the Appeal Brief, the Patent Owner also
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relies on Rule 132 Technical Declaration of Joe Davis (“Davis Decl. I”), and
Rule 132 Secondary Considerations Declaration of Joe Davis (“Davis Decl.
II”), both dated January 18, 2017, and a declaration of Mr. Gary Leseman
(“Leseman Decl.”) also dated January 18, 2017.

INVENTION
The ’828 Patent is directed to a method and apparatus for diluting
engine exhaust gases. Title; Abstract. Exemplary independent claim 1 reads
as follows:
1. A system for manipulating engine exhaust away from a
structure comprising:
a housing coupled to a terminal portion of an exhaust
pipe, the exhaust pipe associated with an engine on the structure
through which exhaust gasses flow at a first velocity; and
a separately motorized ambient air pressurization system
coupled to the housing in fluid communication therewith and
configured to inject pressurized air into the housing such that
the injected air combines with the exhaust gasses exiting the
exhaust pipe and the combined gasses exit the housing at a
second velocity greater than the first velocity and away from
the structure.
App. Br. 89 (Claim App’x, emphasis added).

Independent claim 16 is directed to a method of manipulating engine
exhaust gases away from a structure. App. Br. 91 (Claim App’x).

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REJECTIONS
1. The Examiner rejects claims 1, 3–8, 16, and 19–23 under 35
U.S.C. § 103(a) as obvious over Nakagami3 in view of Koelm.4 Final
Act. 4.
2. The Examiner rejects claims 2, 11, 12, 17, 185, and 24–28 under
35 U.S.C. § 103(a) as obvious over Nakagami in view of Koelm and
Lewis.6 Final Act. 6.
3. The Examiner rejects claims 9, 10, and 13–15 under 35 U.S.C.
§ 103(a) as obvious over Nakagami in view of Koelm and
Sourcebook.7 Final Act. 8.

We AFFIRM-IN-PART.

ANALYSIS
Only those arguments actually made by the Patent Owner have been
considered in this decision. In that regard, because the Patent Owner argues
claim construction and various claims of the different rejections separately,
we address such arguments under separate headings. Arguments that the
Patent Owner could have made but chose not to make have not been

3 Japanese Patent Publication No. 59-122718, July 16, 1984 (citations to the
English translation of record).
4 Publication No. US 2004/0088968, published May 13, 2004.
5 The Examiner’s listing of claims subject to this rejection omits claim 18.
However, this omission appears to be inadvertent in that the Examiner
addresses, and rejects, claim 18. Final Act. 7
6 Patent No. US 6,640,539 B1, issued Nov. 4, 2003.
7 Improving Fan System Performance: A Sourcebook for Industry (April
2003).
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considered and are deemed to be waived. See 37 C.F.R. § 41.37(c)(1)(iv); In
re Jung, 637 F.3d 1356, 1365–66 (Fed. Cir. 2011); Ex parte Frye, 94
USPQ2d 1072, 1075–76 (BPAI 2010 (precedential)). Claims not separately
argued stand or fall with the corresponding claims from which these claims
depend.
As also noted above, the Patent Owner relies on declarations of Mr.
Joe Davis and of Mr. Gary Leseman in support of patentability of the
rejected claims based on secondary considerations evidence. Objective
evidence of secondary considerations must be considered in making an
obviousness decision. See Stratoflex, Inc. v. Aeroquip Corp., 713 F.2d 1530,
1538–39 (Fed. Cir. 1983). Any initial obviousness determination is
reconsidered anew in view of the proffered evidence of nonobviousness.
See In re Rinehart, 531 F.2d 1048, 1052 (CCPA 1976); In re Eli Lilly & Co.,
902 F.2d 943, 945, (Fed. Cir. 1990). In the present appeal, the secondary
considerations evidence as presented in Davis Declaration II, Leseman
Declaration, attachments to these declarations, and arguments directed
thereto, are applicable to each of the prior art rejections. Accordingly, they
have been considered in conjunction with the Patent Owner’s arguments in
reviewing each rejection. However, the secondary considerations evidence
and associated arguments are addressed separately infra under the heading
“Secondary Considerations” for clarity purposes. In that regard, for the
reasons discussed infra, we do not find the Patent Owner’s proffered
evidence of secondary considerations establishes non-obviousness of any
rejected claim.

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Interpretation of “Coupled”
The Patent Owner argues that “the rejections of all claims are tainted
by the Office’s erroneous and overly broad construction given the claim
term ‘coupled’” recited in independent claims 1 and 16. App. Br. 9.
According to the Patent Owner, “[a] person of skill readily would
understand that coupling the claimed system to the exhaust system of a
Diesel engine should be done in such a way that does not allow exhaust gas
to leak from the coupling.” App. Br. 12. The Patent Owner argues that the
term “coupled” must be construed “such that the terminal portion of the
exhaust pipe is ‘coupled’––such as sealed[]––to the housing in such a
manner that all the combined gases ‘exit the housing at a second velocity
greater than the first velocity and away from the structure.’” App. Br. 13–
14. In support, the Patent Owner argues that “[t]he specification clearly
discloses that the claimed ‘housing’ is structurally ‘coupled’ to a terminal
portion of the exhaust pipe in a manner that seals the housing to the pipe,”
and that “the specification establish[es] this type of sealed coupling between
the claimed ‘housing’ and ‘pipe.’” App. Br. 11–12 (emphasis added) (citing
Spec. col. 3, ll. 54–65; col. 4, ll. 17–25; col. 5, ll. 9–18). The Patent Owner
argues that, in contrast, “[t]he Office’s overly broad construction
encompasses embodiments that do not require the combined gases to exit the
housing away from the structure,” and “also allows the coupling between the
housing and the pipe to leak exhaust gases.” App. Br. 12.
However, claims are to be given their broadest reasonable
interpretation consistent with the specification, reading claim language in
light of the specification as it would be interpreted by one of ordinary skill in
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the art. In re Am. Acad. of Sci. Tech. Ctr., 367 F.3d 1359, 1364 (Fed. Cir.
2004); see also In re ICON Health and Fitness, Inc., 496 F.3d 1374, 1379
(Fed. Cir. 2007) (“During reexamination, as with original examination, the
PTO must give claims their broadest reasonable construction consistent with
the specification. Therefore, we look to the specification to see if it provides
a definition for claim terms, but otherwise apply a broad interpretation.”).
Giving broad construction to claim terms is not unreasonable during
examination because the applicant can amend the claims. In re Am. Acad. of
Sci. Tech. Ctr., 367 F.3d at 1364.
It is clearly evident that the claims at issue do not include explicit
recitation to a “sealed” connection. In that regard, it is well established that
features not appearing in the claims cannot be relied upon for patentability.
In re Self, 671 F.2d 1344, 1348 (CCPA 1982). As to the Patent Owner’s
assertion that the term “coupled” itself must be interpreted to mean sealing
between the recited housing and pipe, we disagree. The words of the claim
must be given their plain meaning unless the plain meaning is inconsistent
with the specification. See In re Zletz, 893 F.2d 319, 321 (Fed. Cir. 1989).
While the Patent Owner directs our attention to various portions of the ’828
Patent in support of its position, these portions generally disclose that the
coupling may preferably be sealed, not that it must be sealed. Spec. col. 3,
ll. 54–65 (“The outer housing 14 may be, and preferably is, sealed to the
sleeve 12 at the back portion 20, such as by welding.”) (emphasis added);
col. 4, ll. 17–25 (“It will be appreciated that the collar 28 may be a welded or
un-welded connection, a removable joint, or a flexible connection.”); col. 5,
ll. 9–18 (“this presently preferred embodiment 110 comprises an exhaust
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sleeve 112 and an outer housing 114 . . . The outer housing 114 is sealed to
the sleeve 112 at the back plate 120 by welding and helps to support the
outer housing 114 concentrically about the sleeve 112.”) (emphasis added);
see also Ans. 2–3. Such disclosure of a general preference does not define,
or otherwise limit, the recited “coupling” to require a “sealed” connection.
In that regard, we note that a particular embodiment appearing in the written
description may not be read into the claim if the claim language is broader
than the embodiment. See Superguide Corp. v. DirecTV Enterprises, Inc.,
358 F.3d 870, 875 (Fed. Cir. 2004) (“Though understanding the claim
language may be aided by the explanations contained in the written
description, it is important not to import into a claim limitations that are not
a part of the claim. For example, a particular embodiment appearing in the
written description may not be read into a claim when the claim language is
broader than the embodiment.”).
Accordingly, we do not adopt the Patent Owner’s overly narrow claim
interpretation of “coupled” which, in essence, imports into the claims, a
limitation that is not a part of the claim. Instead, we interpret the claim term
“coupled” based on its relevant plain and ordinary meaning, which is “7. to
join; connect.”8,9

8 Random House Webster’s College Dictionary (1992), “couple.”
9 We also note that during the litigation involving the ’828 Patent, the parties
agreed that “couple” means “fasten, combine, connect or join,” this
interpretation being adopted by the court. Markman Order, pgs. 8, 34 (App.
Br., Exhibit A). This prior construction is entirely consistent with the plain
and ordinary meaning of “coupled” applied herein.
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Rejection 1
The Examiner rejects claims 1, 3–8, 16, and 19–23 as obvious over
Nakagami in view of Koelm. Final Act. 4. The Examiner finds that
Nakagami discloses the invention of claims 1, 7, and 8, wherein the
combined air and exhaust exits the device at a higher velocity than the
exhaust as admitted by the Patent Owner during the original prosecution of
the ’828 Patent. Final Act. 4. The Examiner finds that “[w]hile Nakagami
shows an air pressurization system, Nakagami lacks the system being
motorized.” Final Act. 5. To remedy this deficiency, the Examiner relies on
Koelm for disclosing a motorized pressurization system 39, and concludes
that “[i]t would have been obvious to one of ordinary skill in the art to
provide the motorization as taught by Koelm et al. on the device of
Nakagami in order to increase the exhaust velocity without decreasing
engine efficiency.” Final Act. 5.

Nakagami
The Patent Owner argues that “in all of Nakagami’s embodiments, the
exhaust pipe 7 is not ‘coupled’ to the muffler 8 such that the combined gases
must be directed away from the structure, and to keep exhaust gases from
leaking at the ‘coupling.’” App. Br. 13. Thus, the Patent Owner interprets
the recitation “coupled” to require a sealed connection. The Patent Owner
points out that Nakagami does not disclose the body 8 being coupled to the
distal outlet port 7a, but instead, “describes the arrangement as the exhaust
pipe distal port 7a is ‘inserted’ into body 8,” even though it discloses
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brackets 9 are coupled to the body 8. App. Br. 17–18 (citing Nakagami, pg.
3, ll. 23–31; pg. 4, ll. 6–10; pg. 4, ll. 10–13; and pg. 4, ll. 25–32).
However, the Patent Owner’s argument based on interpreting
“coupled” to require a sealed connection is unpersuasive as it is based on an
improper claim construction of “coupled” for the reasons discussed above.
Indeed, we agree with the Examiner’s finding that “Figures 1, 4 and 6 of
Nakagami show the exhaust pipe extending through the wall of the housing.
This is seen to couple the pipe to the housing. Parts are seen to be ‘coupled’
when they are disclosed as being connected.” Ans. 2. Specifically,
Nakagami discloses the exhaust pipe being joined or connected to the
housing. The Examiner is correct that “[t]he fact that the translation does
not use the words couple, coupled or coupling, does not mean that the
reference fails to show the components coupled. Figures 1, 4 and 6 show the
housing coupled to the end of the exhaust pipe.” Ans. 3. We also agree with
the Examiner that “[a]n unsealed connection would still operate to direct
exhaust gases away from (unclaimed) inhabited areas” (Ans. 3), and observe
that Nakagami’s use of the term “coupled” does not insinuate sealing.
In asserting that the exhaust pipe end of Nakagmi should not be
understood as being coupled to the housing, the Patent Owner argues that
Nakagami would not want the body 8 to be coupled to the distal outlet port
7a because such coupling would undesirably conduct heat to the body 8,
which is not consistent with the teachings in Nakagami to insulate the noise
absorption member 10 from high temperatures. App. Br. 18–19 (citing
Nakagami, pg. 5, ll. 20–27). However, as the Examiner explains, “the noise
absorption member 10 is distinct from the body 8,” and “Nakagami states
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that the flowing air through body 8 helps to cool the exhaust gases.” Ans. 3–
4. Accordingly, we are not persuaded by the Patent Owner’s argument
based on heat.
Similarly, the Patent Owner argues that “coupling the exhaust pipe
end 7a to the body 8 would result in the body 8 producing noise because of
the transfer of vibration from the engine []3/exhaust pipe 7 to the body 8.
Increasing noise by coupling the body and the exhaust pipe would defeat or
diminish the primary muffling purpose of Nakagami’s Noise Absorption
Device.” App. Br. 19. However, the assertion of noise generation via
transfer of vibration is speculative, and does not persuade us that the exhaust
pipe end of Nakagami is not coupled to the housing.
The Patent Owner also argues that Nakagami does not disclose that
the air inlet 12 is coupled to the body 8, or that the air inlet 12 injects
pressurized air into the body 8 such that it combines with exhaust gases
exiting the exhaust pipe 7. App. Br. 20, 23. However, the Patent Owner
references only inlet 12 of Figure 5 of Nakagami, while ignoring the main
inlet of body 8 in Figure 5 and other figures of Nakagami. As pointed out by
the Examiner, the rejection also refers to “the unnumbered inlet at the front
of body 8 in figure 5 admits air that has been pressurized by the propeller.”
Ans. 4.
The Patent Owner further asserts that the Examiner improperly relied
on structure 11 of Nakagami as establishing that the combined air and
exhaust exits the device 8 at a higher velocity than the exhaust alone. App.
Br. 23–24. However, this assertion is not correct because the Examiner does
not rely on pipe 11, but instead, relies on prior admission by the Patent
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Owner as determined by the Board during the related inter partes
reexamination. Final Act. 4–5; 2015 WL 511183 **3–5.
The Patent Owner also argues that Nakagami does not disclose
increasing exhaust speed in automobile embodiments. App. Br. 25.
However, we agree with the Examiner that in view of Nakagami’s disclosure
of using the invention in automobiles in conjunction with a fan (Nakagami,
pg. 6, ll. 30–33), “the functioning of the device would be the same as the
airplane embodiments.” Ans. 5.
Finally, as to Nakagami, the Patent Owner argues that its prior
admission regarding increased exit velocity of combined gases was with
respect to airplane embodiments of Figures 1, 4, and 6 of Nakagami only,
and the admission does not extend to the automotive embodiment. App. Br.
25–26. According to the Patent Owner, “there is no evidence in Nakagami
that the gases in a Nakagami embodiment with a separate fan (e.g., in an
automobile) would exit the muffler at a velocity greater than the velocity of
the exhaust gases.” App. Br. 26. However, not only did the Patent Owner
fail to exclude the automotive embodiment of Nakagami in its admission
during the original prosecution, as noted above, “the functioning of the
device would be the same as the airplane embodiments.” Ans. 5. Therefore,
this argument is not persuasive.

Koelm
The Patent Owner argues that the combination of Nakagami and
Koelm is improper because “Koelm is concerned with venting noxious
gases, other than engine exhaust gases, away from the operator of a
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construction vehicle.” App. Br. 26. The Patent Owner argues that Koelm
does not disclose that blower 40 increases the air pressure in the exhaust
system. App. Br. 28; see also App. Br. 30. However, we observe that the
Examiner’s rejection relies on Nakagami for ambient air, and Koelm is
relied on for the disclosure of a separate motorized fan or blower, as
suggested by Nakagami in automotive applications. Nakagami, pg. 6, ll. 30–
33. The fact that Koelm utilizes its blower to vent other gases instead of
engine exhaust gas is not dispositive in view of Nakagami’s suggestion of
using a fan for its device in automotive applications. Moreover, while
increasing pressure may not be explicitly stated in Koelm as being the
function of its blower, fans/blowers increase pressure of the fluid
immediately downstream to thereby generate fluid flow. As such, when the
fan/blower is applied to the device of Nakagami as suggested in the
automotive embodiment, it would increase pressure of the fluid to
Nakagami’s device.

Combination
The Patent Owner argues that a person of ordinary skill in the art
would not have appreciated from Nakagami, the benefit of coupling a
housing to an exhaust pipe, coupling an air pressurization system to the
housing, and motorizing the air pressurization system so as to result in
higher velocity of the combined air and exhaust. App. Br. 32. The Patent
Owner similarly argues that a person of ordinary skill in the art would not
have appreciated from Koelm, the benefit of injecting pressurized air. App.
Br. 32. In that regard, the Patent Owner argues that “Nakagami never
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discloses that an automobile or an airplane needs a separate fan to increase
the speed of the exhaust gases.” App. Br. 37. Thus, the Patent Owner
asserts that “[t]he Office failed to carry its burden of articulating factual
reasons why a person of ordinary skill would be so motivated to modify
Nakagami alone or because of Koelm. This is error.” App. Br. 33.
However, as already noted, Nakagami itself suggests use of a fan in its
device that couples an exhaust pipe to a housing. Nakagami, pg. 6, ll. 30–
33. Moreover, as already discussed, the Patent Owner has conceded during
the original prosecution of the ’828 Patent that the device of Nakagami
results in higher velocity of the combined air and exhaust. While the Patent
Owner’s disclosure may have been focused on a different benefit than that of
Nakagami, and thus, the motivations for the Patent Owner’s invention may
have differed from that of Nakagami, the reason or motivation provided in
the prior art to combine the references does not have to be the same as that
of the inventors to establish obviousness. Cross Medical Products, Inc. v.
Medtronic Sofamor Danek, Inc., 424 F.3d 1293, 1323 (Fed. Cir. 2005)
(“[o]ne of ordinary skill in the art need not see the identical problem
addressed in a prior art reference to be motivated to apply its teachings.”); In
re Kemps, 97 F.3d 1427, 1430 (Fed. Cir. 1996); KSR Int’l v. Teleflex, Inc.,
550 U.S. 398, 420 (2007) (“Under the correct analysis, any need or problem
known in the field of endeavor at the time of invention and addressed by the
patent can provide a reason for combining the elements in the manner
claimed.”).
The Patent Owner also argues that modification of Nakagami would
be improper and would make it unsatisfactory for its intended purpose of
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providing a noise absorption device for engine exhaust gas of an aircraft
because it “would add significant, expressly undesirable weight to
Nakagami’s muffler and, hence, for the aircraft.” App. Br. 34–36.
However, Nakagami does not suggest using a fan for aircraft. Instead, it
suggests using a fan for auto automotive applications. Nakagami, pg. 6, ll.
30–33. As explained by the Examiner, “use [of a fan] in an automobile
cannot be properly stated to render the device unsatisfactory for its intended
purpose.” Ans. 6.
The Patent Owner further argues that “[w]hile Nakagami mentions the
possible use of his device with an automobile, that is clearly not his intended
use.” App. Br. 36. This argument is unpersuasive in view of the fact that
Nakagami states that “an air fan . . . may be required when the device of the
present invention is applied to automobiles.” Nakagami, pg. 6, ll. 30–33
(emphasis added).

Claim 3
Claim 3 recites “wherein the injected air creates a pressure reduction
in the exhaust gasses.” App. Br. 89 (Claims App’x). The Examiner rejects
this claim finding that “the pressure reduction occurs in Nakagami as the
entrainment of the air causes the pressure drop that increases the velocity as
evidenced in Figure 5, or any of the other figures.” Final Act. 5. The Patent
Owner refers to Figure 5 to argue that “the air passively flowing from the
engine room (2) into pipe (11) does not create a pressure reduction in the
exhaust gases as required by claim 3.” App. Br. 38. However, the Patent
Owner’s argument is unpersuasive in that it overlooks the fact that the
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Examiner’s rejection also refers to “any of the other figures,” which includes
Figures 1, 2, 4, and 6. Final Act. 5; Ans. 6–7. These figures do not include,
or otherwise address air from the engine room, but instead, combines the
exhaust gases with air. Figures 1, 2, 4, and 6. The Patent Owner also argues
that “there is no disclosure in Koelm of injecting air to create a pressure
reduction in the exhaust gases.” App. Br. 39. However, this argument is
unpersuasive because the references need not teach the same motivation or
benefit taught by the Patent Owner as discussed above.

Claim 4
Claim 4 recites “wherein an annular region is formed between an
inside surface of the housing and an outside surface of the pipe.” App. Br.
89 (Claims App’x). The Examiner rejects this claim finding that the recited
“annular region is shown in Figures 1, 5 and 6 of Nakagami.” Final Act. 5.
Oddly, the Patent Owner argues that Figure 5 of Nakagami discloses
structure 11 interposed between the exhaust pipe 7 and the body 8 (App. Br.
40), but ignores Figures 1 and 6 also referred to by the Examiner that
disclose an annular region. See also Ans. 7. Accordingly, this argument is
unpersuasive.

Claim 5
Claim 5 recites “wherein an exit portion of the housing comprises a
converging nozzle.” App. Br. 89 (Claims App’x). The Examiner rejects this
claim finding that “the converging nozzle is illustrated in Figure 4 of
Nakagami at 8b.” Final Act. 5. The Patent Owner argues that Figure 4 of
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Nakagami “suggests that the end 8b is not a converging circular nozzle, but
more likely a diverging oval nozzle (such as commonly seen on car exhaust
pipes),” and that “[t]here simply is not enough information from the partial
view (i.e., cross-sectional view) of this disclosure for the Office to support
its conclusion” as to Figure 4 of Nakagami. App. Br. 41–42.
We generally agree with the Examiner. As the Examiner explains,
“[t]he cross section at the end of the body is clearly smaller than the main
body. This makes it converging.” Ans. 7. The Patent Owner’s assertion of
an oval nozzle is speculative and has no basis in Nakagami. As to Figure 1,
Nakagami discloses that the body “has a cylindrical shape having open front
and rear ends,” and refers to it as a “cylindrical body 8.” Nakagami, pg. 3,
ll. 28–29, 31. Nakagami states that “Fig. 4 is a side view, partially in cross-
section, showing a modified example of a noise absorption member.”
Nakagami, pg. 7, ll. 30–31. In describing Figure 4, Nakagami refers to
replacing the noise absorption member with a resonant noise absorption
panel, but does not mention any deviation from the described cylindrical
shape. Accordingly, we are not persuaded by the Patent Owner’s arguments.

Claim 6
Claim 6 recites “wherein the annular region has an area substantially
equal to a discharge area of the pressurization system.” App. Br. 89 (Claims
App’x). The Examiner finds that this limitation is satisfied by “the relative
areas [] seen in Figure 3 of Nakagami.” Final Act. 5. The Patent Owner
argues that “there simply is not enough information in Nakagmi for the
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Office to support its conclusion.” App. Br. 43–44. We agree with the Patent
Owner.
First, we observe that by its dependency, claim 6 includes limitations
of claim 4, which defines that the “annular region is formed between an
inside surface of the housing and an outside surface of the pipe.” App. Br.
89 (Claims App’x). Figure 3 of Nakagami does not include such an annular
region. While other figures of Nakagami arguably disclose an annular
region, Nakagami does not illustrate or otherwise discuss the discharge area
of the suggested fan relative to an annular region. The Examiner also
responds that Figure 4 “shows an inlet to the annular section that matches
the cross sectional area of the annular section.” Ans. 7. However, we do not
agree that the inlet to the annular section can reasonably be considered to
correspond to the recited “discharge area of the pressurization system.”
While the rejection of independent claim 1 (from which claim 6 ultimately
depends) also relies on Koelm for disclosing a motorized pressurization
system 39, Koelm does not appear to disclose sizing the outlet thereof to be
of substantially the same area as an annular region. Nor does the Examiner
rely on Koelm for any such teaching. Accordingly, the Examiner’s rejection
is inadequate to establish unpatentability of claim 6, and is reversed.

Claim 16
The Examiner rejects independent claim 16, stating that it is “the
method equivalent of claim 5.” Final Act. 5. The Patent Owner relies on
substantially the same arguments submitted with respect to claim 1. App.
Br. 45–46. As discussed, these arguments are unpersuasive.
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Claim 19
Claim 19 merely recites “further comprising increasing the operating
efficiency of an engine.” App. Br. 91 (Claims App’x.). The Examiner
rejects claim 19, finding that “Nakagami states that the prior art systems
adversely influence engine performance, but his device does not. This is
seen as stating that this device increases the operating efficiency of prior art
devices.” Final Act. 5; Ans. 8. The Patent Owner argues that this disclosure
does not mean that the Nakagami’s muffler actually “increases the operating
efficiency of an engine” as required by the claim. Final Act. 47. We agree
with the Examiner. Nakagami is clear in its disclosure that prior art systems
degrade engine performance whereas its device does not. Accordingly,
Nakagami’s device improves the operating efficiency of an engine over the
prior art systems. Moreover, the general aspirational goal of “increasing the
operating efficiency of an engine” would have been obvious to one of
ordinary skill in the art. In this regard, we note that claim 19 does not recite
any steps or method for attaining such improved efficiency. See, e.g.,
Dystar Textilfarben GmbH & Co. Deutschland KG v. C.H. Patrick Co., 464
F.3d 1356, 1368 (Fed. Cir. 2006) (implicit motivation to combine found to
exist when the improvement is technology-independent and the combination
results in a more desirable product such as a stronger, cheaper, cleaner,
faster, lighter, smaller, more durable, or more efficient product). Therefore,
the Patent Owner’s argument is unpersuasive.

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Claim 20
The Examiner rejects claim 20, finding that “the annular region is
shown in Figures 1, 5 and 6 of Nakagami.” Final Act. 6. The Patent Owner
relies on the same unpersuasive argument submitted relative to claim 4 for
patentability of claim 20. App. Br. 47–48. The Patent Owner also argues
that the proposed modification to Nakagami would render it unsatisfactory
for its intended purpose as discussed and also explained by Mr. Davis. App.
Br. 48. However, this argument is unpersuasive for the reasons already
discussed above relative to the combination of Nakagami and Koelm. The
Patent Owner also does not provide a citation to where Mr. Davis explains
that the proposed modification to Nakagami in view of Koelm would render
it unsatisfactory for its intended purpose.

Claim 21
Claim 21 recites “injecting the [air] a velocity substantially equal to or
greater than a velocity of exhaust gases exiting the pipe.” App. Br. 91
(Claims App’x.). The Examiner rejects claim 21, finding that “the
slipstream of Nakagami is seen to inherently inject air at a rate exceeding the
exhaust flow rate as it is stated to reduce back pressure.” Final Act. 6. The
Examiner also relies on the finding in the related inter partes reexamination
decision by the Board that during the original prosecution of the ’828 Patent,
the Patent Owner “admitted that the combined stream leaves at a rate
exceeding the exhaust gas entry rate, which would not happen if the injected
air was slower than the exhaust input.” Final Act. 6.
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The Patent Owner disputes that an admission was made during the
original prosecution of the ’828 Patent. App. Br. 48–54. This general
argument has already been addressed and found unpersuasive in the 2014-
008672 Decision. 2015 WL 511183 **3–5. We nonetheless briefly address
further arguments of the Patent Owner submitted in its Appeal Brief
pertaining to the admission determination.
The Patent Owner argues that “[t]he Board’s reliance on Assignee’s
statement concerning the Offices’ characterization of Nakagami as
admission is not substantial evidence of what Nakagami disclosed to a
person of skill in December 2005,” and that the Office did not make a
rejection during the original prosecution using the term “inherent.” App. Br.
48, 51. However, it is unclear what the Patent Owner is actually disputing as
the Patent Owner concedes that “[t]he Office again rejected claims over
Nakagami contending that ‘the combined fluid flows out the exit portion at a
velocity greater than the exhaust gases alone (see Figures 4, 6, abstract).’”
App. Br. 50–51 (quoting Final Office Action 3, dated March 21, 2008). The
fact that term “inherent” was used in the context of the Examiner’s response
and explanation to the Patent Owner’s argument that Nakagami did not
disclose the pertinent limitation is not dispositive considering the
Examiner’s rejection (which as the Patent Owner notes) is based on the
finding that Nakagami discloses “propelling the combined fluid through the
nozzle at a velocity greater than the exhaust gas alone.” See App. Br. 50
(excerpt of record). The Patent Owner acceded to this finding, stating
“[a]lthough not expressly disclosed in Nakagami, Assignee [Patent Owner]
accedes to the Office’s conclusion that the velocity of the gas exiting the
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Nakagmi muffler is likely more than the velocity of the exhaust gas exiting
the engine exhaust pipe.” App. Br. 53 (excerpt of record); see also 2015 WL
511183 **3–5.
The Patent Owner asserts that in context of the prosecution history,
the Examiner concluded during the original prosecution that “if there was an
increase in mass flow rate, a faster flow velocity is inherent through the
Nakagami nozzle,” and that the Patent Owner acceded to such a hypothetical
situation. App. Br. 53 (emphasis in original). We disagree with this
characterization of the record as the Examiner during the original
prosecution did not use the hypothetical term “if.” To the contrary, the
original Examiner made a factual finding that Nakagami discloses
“propelling the combined fluid through the nozzle at a velocity greater than
the exhaust gas alone.” See App. Br. 50 (excerpt of record). In response to
the Patent Owner’s argument that Nakagami fails to disclose a combined
flow at a velocity greater than the exhaust gas alone, the original Examiner
further explained “it is inherent that the combined fluid flows through the
nozzle in Nakagami is at a larger mass flow rate than that of exhaust gas
alone and since a combination of the pressurized air and exhaust gas causes
larger mass flow rate through a fixed flow area and inherently induces a
faster flow velocity,” thereby further explaining the basis of the fact finding
to the Patent Owner. See App. Br. 51 (excerpt of record). As noted above,
the Patent Owner acceded to the finding of the Examiner. 2015 WL 511183
*4. As stated in the related inter partes reexamination Decision of Appeal
2014-008672, “[t]he appropriate time to challenge the conclusion of the
Office was when the conclusion was made. The Patent Owner acceded to
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the conclusion of the Office and thereby admitted that which the Patent
Owner now wishes to dispute.” 2015 WL 511183 *5.

Claim 22
The Examiner rejects claim 22, finding that “the annular region is
shown in Figures 1, 5 and 6 of Nakagami.” Final Act. 6. The Patent Owner
relies on arguments relative to claims 3 and 20. App. Br. 56. However, as
discussed above, the Patent Owner’s arguments relative to claims 3 and 20
are unpersuasive.

Claim 23
Claim 23 recites “providing an air inlet hood for the air pressurization
system.” Final Act. 92 (Claims App’x.). The Examiner rejects claim 23,
finding that “Koelm shows upper wall 6a of frame 6, which is seen as a hood
for the air pressurization system.” Final Act. 6. According to the Examiner,
“[w]hile the upper wall and frame of Koelm will serve to direct fumes and
air into the blower, 46 is shown as a slightly enlarged distant entrance for the
blower which call also be seen as a hood.” Ans. 9.
The Patent Owner disagrees and argues, inter alia, that “Koelm does
not disclose an ‘air inlet hood’ for inlet 46, and it is unreasonable and
erroneous for the Office to conclude that the ‘upper wall 6a’ of ‘frame 6’ is
the claimed ‘air inlet hood.’” App. Br. 58. We agree with the Patent Owner.
The upper wall 6a, at most, can be considered a hood for the air
pressurization system, not a hood for an air inlet. In that regard, we observe
that Koelm discloses inlet 46 that is external to the blower, and not even
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covered by the upper wall 6a. Koelm Fig. 3. Therefore, we do not sustain
this rejection with respect to claim 23.

In summary, in considering Rejection 1 in view of the above and the
proffered secondary considerations evidence discussed infra, we affirm the
Examiner’s rejection of claims 1, 3–5, 16, and 19–22 as obvious over
Nakagami in view of Koelm, but reverse as to claims 6–8 and 23, claims 7
and 8 ultimately depending from claim 6.

Rejection 2
The Examiner rejects claims 2, 11, 12, 17, 18, and 24–28 as obvious
over Nakagami in view of Koelm and Lewis. Final Act. 6. The Examiner
finds that the combination of Nakagami and Koelm lacks computer control.
Final Act. 6. The Examiner relies on Lewis for disclosing “an adjustable
pressurizing device 209 that is computer controlled by 12,” and concludes
that “[i]t would have been obvious to one of ordinary skill in the art to
provide the adjustable pressurizing device that is computer controlled as
taught by Lewis et al. on the device of Nakagami and Koelm et al. in order
to ensure proper entraining and expelling the exhaust gasses.” Final Act. 6.

Claims 2, 11, and 12
The Patent Owner argues that “Lewis teaches controlling the speed of
a fan to maintain a constant pressure to avoid backpressure,” and fails to
disclose “increasing the velocity of engine exhaust gases by determining an
engine’s speed or modifying various parameters based on the engine speed
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and other various parameters as presently recited in these claims.” App. Br.
60. These arguments are unpersuasive.
First, claims 2 and 12 merely recite that “the air pressurization system
is computer controlled,” while claim 11 recites that “the pressurization
created by the pressurization system is adjustable.” App. Br. 89, 90 (Claims
App’x.). These claims do not require “increasing the velocity of engine
exhaust gases by determining an engine’s speed or modifying various
parameters based on the engine speed and other various parameters as
presently recited in these claims” as asserted by the Patent Owner. In re
Self, 671 F.2d at 1348 (“Many of appellant’s arguments fail from the outset
because . . . they are not based on limitations appearing in the claims . . . .”).
Second, the Examiner is relying on Lewis for a fan controller to control fan
speed in the combination of Nakagami and Koelm. Even if the controller is
used in the device of Lewis to maintain a constant pressure to avoid
backpressure, this does not detract from its applicability to control the
blower of Koelm as applied to Nakagami. The reason or motivation
provided for combining prior art does not have to be the same as that of the
inventors to establish obviousness. In re Kemps, 97 F.3d 1427, 1430 (Fed.
Cir. 1996); KSR, 550 U.S. at 420 (“Under the correct analysis, any need or
problem known in the field of endeavor at the time of invention and
addressed by the patent can provide a reason for combining the elements in
the manner claimed.”).
The Patent Owner further argues that
There would [be] no need for Lewis to modify Koelm as
modified by Nakagami because the combined teachings of
Koelm and Nakagami (as best understood) likely would result
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in a structure that included a fixed sized internal combustion
engine. As discussed above, Lewis controls the speed of the fan
of the test equipment to accommodate various engine types to
provide effective emission testing. A combination with Lewis
would simply not have the ability, therefore, to produce the
determining and adjusting steps as set forth in these claims to
sample various aspects of the engine (e.g., speed, etc.) and
make critical adjustments based on those measurements with an
engine of a fixed size.
App. Br. 61.
However, this argument is also unpersuasive because as the Examiner
finds,
Lewis teaches a computer that controls a fan to control the
dilution air flow rate (line 66 of column 8). The air is diluting
an exhaust stream. This is computer control for an air
pressurization system associated with engine exhaust. The
claims (2 and 12) call for no specifics pertaining to control
parameters or desired results, just computer control for an air
pressurization system. . . . Lines 23-33 of column 4 and lines
28-40 of column 11 describe the air introduction device
supplying variable amounts of air to the exhaust stream based
on engine operation mode and controlled by controller 12.
Ans. 9.
Indeed, contrary to the Patent Owner’s assertion that Lewis only
makes flow adjustments to accommodate for various engine types, Lewis
specifically discloses adjustments in the context of operating any given
engine, stating:
the present invention controls voltage Vp to obtain a desired
amount of air introduced via pump 209. Since the amount of air
for a given voltage depends on these environmental conditions,
the present invention adjusts the pump command to compensate
for variation in these environmental conditions.
Lewis, col. 4, ll. 46–52; see also id. at col. 6, ll. 14–38.
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The Patent Owner further argues that “Nakagami explicitly teaches
away from extending the applicability of his disclosure to automobile
applications” because it states that it is unnecessary to provide a fan “which
may be required when the device of the present invention is applied to
automobiles.” App. Br. 62. This argument is unpersuasive for reasons
already discussed above. Nakagami’s teaching “it is unnecessary to provide
an additional device, such as an air fan, which may be required when the
device of the present invention is applied to automobiles” may be considered
as teaching away from using a fan in conjunction with an aircraft. However,
this teaching does not teach away from using the disclosed device, modified
with a fan, in automobiles. To the contrary, it suggests such an application.

Claims 17, 18, 24, and 25
Claims 17, 18, and 24 depend from claim 16, while claim 25 depends
from claim 24. Claim 17 recites “determining how much pressurization
from the air pressurization is needed to adequately manipulate the exhaust
gases,” and claim 18 requires determining a weather condition. App. Br. 91
(Claims App’x). Claim 24 requires determining current engine speed, while
claim 25 recites “further comprising adjusting the pressurization based on at
least the engine speed and one or more conditions.” App. Br. 92 (Claims
App’x).
As to claim 17, the Patent Owner argues that “Lewis does not disclose
controlling the air pump to manipulate the speed of a combined engine
exhaust and ambient air gas.” App. Br. 63. However, we agree with the
Examiner’s finding that Lewis discloses that the air pump is controlled by a
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controller based on various inputs, and such control of the air pump can be
considered “as determining how much pressurization from the air
pressurization is needed to adequately manipulate the exhaust gases.” Final
Act. 7 (citing Lewis, col. 3, ll. 34 et seq.; col. 4, ll. 24–25). We also find no
error in the Examiner’s finding that “Lewis teaches computer control of a
fan, including weather conditions as parameters, for an exhaust system air
induction fan” (Ans. 10), and that Lewis discloses that “environmental
sensors including ambient temperature and barometric pressure sensors can
be used.” Final Act. 7 (citing Lewis, col. 4, ll. 42, et seq.). Indeed, as
already discussed above, Lewis specifically discloses adjustments to control
voltage Vp in view environmental conditions in order to control the amount
of air introduced via pump 209, thereby satisfying the recitations of claims
17 and 18. Lewis, col. 4, ll. 46–52; see also id. at col. 6, ll. 14–38. While
the Patent Owner appears to now argue that the air pump is not controlled to
manipulate the speed of the combined gases, this argument is inconsistent
with the noted disclosure of Lewis itself, as well as the Patent Owner’s prior
assertion and acknowledgement that “Lewis teaches controlling the speed of
a fan to maintain a constant pressure to avoid backpressure.” App. Br. 60.
As to claims 24 and 25, the Examiner rejects these claims, correctly
finding “lines 34-44 of column 3 in Lewis give sensors indicating engine
speed as one of the inputs to the controller. Lines 24 and 25 of column 4 of
Lewis state that the air pump is controlled by the controller.” Final Act. 7.
The Patent Owner asserts that “[b]ecause Lewis is an emissions test system,
Lewis wants the presence of the test system to be invisible to the engine
being tested,” and that this is contrary to “the purpose of the subject claims,
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in which the actual conditions of the exhaust producing engine and
environmental conditions are sampled to manipulate the combined gases by
increasing or decreasing the speed of the combined gases.” App. Br. 63–64.
However, the fundamental premise of this argument is incorrect in that
Lewis discloses an engine control for low emission vehicle starting, which
actively controls the engine during startup, and is not just a test system. See
Lewis, Title, Abst., Detailed Description.
The Patent Owner further argues that “combining Lewis with
Nakagami and Koelm would create an unworkable and dangerous
combination in which the airplane’s engine speed is controlled not by the
pilot or flight requirements, but rather by the speed of the exhaust gases
exiting the exhaust pipe.” App. Br. 64. This argument is unpersuasive and
the basis thereof is unclear as the rejection suggests providing computer
control to the fan of Koelm that is implemented on the device of Nakagami
as suggested by Nakagami with respect to automobiles. The computer
controller of Lewis is for vehicles. Lewis, Title. Nothing in Lewis suggests
controlling the engine based solely on speed of exhaust gases.

In summary, in considering Rejection 2 in view of the above and the
proffered secondary considerations evidence discussed infra, we affirm the
Examiner’s rejection of claims 2, 11, 12, 17, and 24–28 as obvious over
Nakagami in view of Koelm and Lewis.

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Rejection 3
The Examiner rejects claims 9, 10, and 13–15 as obvious over
Nakagami in view of Koelm and Sourcebook. Final Act. 8. The Examiner
finds that the combination of Nakagami and Koelm “lack[s] the vane
structure and the details of the blower” recited in these claims. Final Act. 8.
The Examiner finds that Sourcebook discloses vane structures and different
blowers to conclude that provision of such features as disclosed in
Sourcebook would have been obvious to one of ordinary skill in the art in
order to reduce exhaust system back pressure and to “provide a reliable air
pressurization system.” Final Act. 8.

Claims 9 and 10
Claim 9 depends from claim 6, and recites “turning and straightening
vanes in the housing,” while claim 10 depends from claim 9. App. Br. 90
(Claims App’x.). The Examiner and the Patent Owner disagree as to
location of vanes disclosed in Sourcebook. App. Br. 65; Ans. 10. However,
this disagreement is moot because claims 9 and 10 ultimately depend from
claim 6, and the Examiner’s application of Sourcebook does not address the
deficiency noted with respect to claim 6. Therefore, we reverse the rejection
as to claims 9 and 10.

Claims 13–15
Claim 13 requires “a ducted axial blower,” while claims 14 and 15
depend from claim 13, and respectively require the axial blower to be “non-
overloading” and “non-stalling.” App. Br. 90 (Claims App’x). The Patent
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Owner argues that “[a]lthough the relevant cited portions of the Sourcebook
illustrate various fan selections for various applications including axial fans
(e.g., pp. 21–22), the Sourcebook does not disclose ‘a ducted axial blower,’
‘a non-overloading axial blower,’ and ‘a non-stalling axial blower’ as recited
in these claims.” App. Br. 66.
However, as the Examiner finds (Ans. 11), Sourcebook discloses a
tubeaxial fan, which is a ducted axial blower as recited in claim 13.
Sourcebook 22. In addition, as the Examiner further finds (Ans. 11), non-
stalling blower recited in claim 15 is also disclosed by Sourcebook, which
states that the “problem of stall can be solved in many axial fans by selecting
a fan with an anti-stall device.” Sourcebook 22. As to claim 14 and its
recitation that the axial blower be “non-overloading,” Sourcebook also
establishes that “non-overloading” fans were well-known in the art.
Sourcebook 8.
The Patent Owner further argues that “there is no indication why it
would have been obvious to one of ordinary skill in the art (without
hindsight) to add these types of blowers to the inner portion of Nakagami’s
airplane engine room.” App. Br. 66. However, as discussed above,
Sourcebook clearly establishes that the fans of the type recited in claims 13–
15 are conventional and well-known. In implementing a fan in the device of
Nakagami as suggested therein, a person of ordinary skill in the art would
have considered what specific type of fan should be utilized, including those
noted in the Sourcebook. Therefore, we are not persuaded by the Patent
Owner’s argument that claims 13–15 recite patentable subject matter.

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In summary, in considering Rejection 3 in view of the above and the
proffered secondary considerations evidence discussed infra, we affirm the
Examiner’s rejection of claims 13–15 as obvious over Nakagami in view of
Koelm and Sourcebook, but reverse as to claims 9 and 10.

Secondary Considerations Evidence
As noted above, secondary considerations evidence is presented in the
form of Davis Declaration II, Leseman Declaration, and attachments to these
declarations. We have considered this evidence in evaluating the prior art
rejections supra, and for the reasons discussed infra, we do not find the
Patent Owner’s proffered evidence of secondary considerations establishes
non-obviousness of any rejected claim.

Evidence of Long-Felt Need
The Patent Owner argues that the submitted secondary considerations
evidence in the form of the declarations demonstrates long-felt need, and
that this long-felt need has been satisfied by the ’828 Patent. App. Br. 67–
84. In this regard, Mr. Leseman testifies to the following10:
A1. Diesel engine exhaust blowback has been prevalent and
long-standing issue on drilling rigs for at least the thirty years I
have been involved in the industry. Although many engineers
and others considered skilled in the art have attempted solutions
to this problem, I am not aware of any solution that adequately
solved the industry’s long-standing need to effectively

10 We refer to the reproduced testimony set forth infra using citations
“Stmnt” or “Stmnts” together with the alpha-numeric designation
corresponding to the referenced statement(s).
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manipulate the flow of exhaust gas away from a drilling rig
prior to the solutions claimed in the ’828 Patent.
Leseman Decl. ¶ 8.
A2. In 1999, diesel exhaust issues were encountered by Global
Marine Drilling Company on an offshore structure named Celtic Sea
that was not solved using different techniques. Leseman Decl. ¶¶ 8–
12.
A3. Those failed techniques attempted on the Celtic Sea included
“increasing the height of the exhaust stacks, relocating to aft engine
exhaust termination, and implementing water wash solutions,” and
using Hartzell fans. Leseman Decl. ¶¶ 12–17.
A4. Upon purchase of the Celtic Sea by Transocean Ltd., two Enjet
devices embodying the claimed invention were installed and “the
Enjet devices solved the diesel engine exhaust problems the rig had
experienced for nearly a decade.” Leseman Decl. ¶ 18.
A5. “Subsequent to the Enjet device installation, Transocean
required all future rigs be equipped with Eldridge Enjet devices.”
Leseman Decl. ¶ 18.

In relying on transcript testimony given during the related litigation
(Davis Decl. II ¶ 8), Mr. Davis testifies to the following:
B1. In 2005, “GlobalSantaFe was experiencing complications due
to exhaust gas from its engines being blown back on the rig, thus
coating the side of the rig, the walkways, and lifeboats.” Davis Decl.
II ¶ 26.
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B2. “[T]he problems experienced by GlobalSantaFe were typical in
the industry for over thirty years (sixteen of which I have been a
member of this oil and gas industry).” Davis Decl. II ¶ 27.
B3. “[O]ther rig builders were experiencing similar health and
safety concerns due to the adverse effects of diesel engine exhaust.
For example, workers on Jurong11 rigs were complaining of excess
fumes and the depositing of soot on the rigs’ walking surfaces and
lifeboats due to the diesel exhaust blowback.” Davis Decl. II ¶ 28.
B4. “Despite the persistence of the problem with exhaust gases on
drilling rigs, the problem remained unsolved for many years. For
example—when faced with this problem for rigs in its shipyard—
Jurong was unable to solve it.” Davis Decl. II ¶ 30.
B5. “In fact, although I never attempted to solve this problem prior
to 2005, others from Eldridge have attempted to solve the problem
without success.” Davis Decl. II ¶ 32.
B6. “This persistent problem was not merely isolated to particular
drilling rigs (such as those owned and/or operated by GlobalSantaFe).
In fact, the problem remained unsolved for over thirty years, and it has
generally affected all stationary drilling rigs with diesel engine
exhaust discharge.” Davis Decl. II ¶ 33.
B7. “Although several solutions to this problem were attempted
over the past thirty years, none of them were fully successful.” Davis
Decl. II ¶ 35.

11 It is our understanding that “Jurong” refers to Jurong Shipyard.
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B8. Those failed solutions included use of a chimney/smoke stack,
redirecting the exhaust, water washer systems, and using fans. Davis
Decl. II ¶¶ 35–39.
B9. “With all of these attempts, over multiple decades, the Enjet
device was the only one to satisfactorily solve the problem.” Davis
Decl. II ¶ 40.
B10. “A total of two prototypes were built for GlobalSantaFe. These
devices were installed on two rigs in Jurong’s shipyard and placed on
the outermost corners of the drilling rig. Despite additional
skepticism from GlobalSantaFe, the prototypes worked extremely
well.” Davis Decl. II ¶ 47.

Evidence of Copying
The Patent Owner also argues that the evidence submitted via the
second declaration of Mr. Davis demonstrates copying. App. Br. 84–87. In
relying on transcript testimony given during the related litigation (Davis
Decl. II ¶ 8), Mr. Davis testifies to the following:
C1. “Jurong, in turn, directly used these drawings [for Enjet] to
have a similar device constructed.” Davis Decl. II ¶ 52; see also id. at
¶¶ 51.
C2. Jurong had the competing device built (one of the devices
determined by the jury in the Enjet Lawsuit to be infringing the
’828 Patent) with the aid of these drawings, despite not having
any idea how to independently solve this problem. Even so,
with these drawings, the solution could easily be derived from
the figures.
Davis Decl. II ¶ 53; see also id. ¶¶ 54–55.
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C3. “Those [infringing] devices are the same invention but of a
different version,” and “embody at least one claim of the ’828 Patent.”
Davis Decl. II ¶¶ 60–61.
C4. In the Enjet Lawsuit, the jury found various defendants liable
for patent infringement.12 Davis Decl. II ¶ 62.

Other Evidence
D1. The second declaration of Mr. Davis also states: “The
commercial embodiment of that device (the Enjet device) is covered
by the ’828 Patent and is the one presently being sold and is
experiencing commercial success.” Davis Decl. II ¶ 48.
D2. The second declaration of Mr. Davis further states: “In fact, the
Enjet device is highly regarded in the industry and has been wildly
successful with Eldridge’s customers.” Davis Decl. II ¶ 49. In this
regard, the underlying testimony from the trial transcript states that
the Patent Owner has sold about 140 or 141 Enjets. Id.
D3. Email of Mr. Gaitley of Transocean, dated January 3, 2012
forwards an email from declarant Mr. Davis to four individuals, the
email of Mr. Davis including a youtube video link to an Enjet
application. App. Br., Exhibit I. The email of Mr. Gaitley states:

12 In this regard, the record indicates that the defendants Jurong Shipyard
Pte. Ltd., Seadrill Americas Inc., Seadrill US Gulf LLC, and Atwood
Defendants were found to infringe claims 1, 13, 14, and 15 of the ’828
patent on three rigs (L.C. Eldridge Sales Co., Ltd, Leseman Davis LLC v.
Azen Manufacturing Pte., Ltd., et al., Civil Action No. 6:11-cv-599-MHS
(E.D. Tex.), Verdict Form 2–4, affirmed, Appeal 2015-1143, R. 36 (Fed.
Cir. 2015)).
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“Gents: In case you are still curious about the effectiveness of the
En[j]ets, here is a short video that I think you will find helpful. It
demonstrates a before and after effect.” Id.

Discussion
The Patent Owner argues that the above proffered evidence
demonstrates long-felt need (App. Br. 67–84) and copying (App. Br. 84–87).
Accordingly, the Patent Owner asserts that when the submitted secondary
evidence is considered, the evidence demonstrates nonobviousness of at
least independent claims 1 and 16, and thus, claims 1–28 presently
reexamined and rejected. App. Br. 87.
Establishing long-felt need requires objective evidence showing
existence of a persistent problem recognized by those of ordinary skill in the
art for which a solution was not known. In re Gershon, 372 F.2d 535, 538–
39 (CCPA 1967). The long-felt need must not have been satisfied by
another before the invention. Newell Co. v. Kenney Mfg. Co., 864 F.2d 757,
768 (Fed. Cir. 1988). Hence, the Patent Owner must present affidavits or
other factual evidence of “a failure of others to provide a feasible solution to
[a] long-standing problem” and evidence “that experts did not foresee” the
solution claimed. See In re Piasecki, 745 F.2d 1468, 1475 (Fed. Cir. 1984).
Satisfaction of a long-felt but unresolved need is not evidence of
nonobviousness unless it is shown that widespread efforts of skilled workers
having knowledge of the prior art had failed to find a solution to the
problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963); see also Toledo
Pressed Steel Co. v. Standard Parts, Inc., 307 U.S. 350, 356 (1939).
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Finally, the invention must satisfy the long-felt need. In re Cavanagh, 436
F.2d 491, 496 (CCPA 1971).
As to the evidence of long-felt need, we are provided with statements
by both Mr. Leseman and Mr. Davis asserting that diesel engine exhaust
blowback has been a longstanding problem generally in all stationary
drilling rigs with diesel engine exhaust discharge (Stmnts A1, B2–B7).
However, in our review of the evidence, this testimony is not adequately
supported by objective evidence that establishes existence of a long-felt but
unresolved need.
The testimony of Mr. Leseman and Mr. Davis as to the specifically
identified offshore structure named Celtic Sea (Stmnt A2), and an
unidentified rig of GlobalSantaFe/Jurong (Stmnts B1, B3, B4) do establish
that diesel exhaust problems existed on these rigs. However, such
statements of the declarants and identification of two rigs having problems
with diesel exhaust are not very probative in establishing that there existed a
persistent problem recognized by those of ordinary skill in the art for which
a solution was not known, or that widespread efforts of skilled workers
having knowledge of the prior art had failed to find a solution to the
problem. In re Gershon, 372 F.2d at 538–39; In re Allen, 324 F.2d at 997;
see also Toledo Pressed Steel, 307 U.S. at 356.
In the above regard, there is minimal evidence in the record that two
rigs noted by the declarants are representative of conventional rigs in the
industry such that diesel exhaust issues raised in these rigs would have been
recognized by those of ordinary skill in the art as being typical to rigs
generally. Indeed, evidence of record indicates that the offshore structure
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named Celtic Sea originally was a hotel structure and the diesel exhaust
issues appears to have only developed upon its conversion. Leseman Decl.
¶ 9 (“Global Marine Drilling Company . . . purchased an offshore structure
named the ‘Celtic Sea,’ originally designed as an offshore hotel for oil and
gas workers. In 1998, Global Marine converted the structure into an offshore
drilling rig. Included in those modifications was the addition of a ‘moon
pool’ for the drilling activities.”). This evidence suggests that the problems
on the Celtic Sea were unique and not necessarily representative of a long-
felt need on other rigs.
The Patent Owner further refers to unapplied prior art references in
support of its assertion as to long-felt need. Specifically, the Patent Owner
argues that earlier U.S. Patent No. 4,352,087 entitled “Fume Detector and
Alarm System” teaches that:
In many situations the living space or work space of
workmen, crews, operators, passengers or others in
various marine craft or vehicles and other environs is
such that the atmosphere may become contaminated with
combustible or toxic gases or fumes posing a threat to the
health or safety of exposed individuals. This is
particularly true in the case of . . . off-shore drilling rigs
. . . and other places which may be invaded by the gases
or fumes of power plants or fuel compartments and these
gases or fumes may become concentrated to a dangerous
level.
App. Br. 72 (quoting U.S. Patent No. 4,352,087, col. 1, ll. 9–21).
The Patent Owner also refers to U.S. Patent No. 5,400,593 as
“recogniz[ing] the dangers of diesel exhaust blowback on marine vessels due
to noxious fumes and the like” in its teaching that:
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Vessels with marine diesel engines share a common
problem in that the noxious fumes from the exhaust
emissions reach people aboard and in the vicinity of the
vessel; this problem is most pronounced when wind
currents carry the exhaust fumes back onto the deck at
start up or when the vessel docks or moves about slowly.
In addition to being unpleasant, noxious fumes contain
solid and liquid particulates and volatile hydrocarbons
from partially combusted diesel oil fuel.
App. Br. 72 (quoting U.S. Patent No. 5,400,593, col. 1, ll. 20–28).
However, the referenced prior art patents appear to provide various
solutions for the identified problem, and provides evidence that there are
multiple solutions to the diesel exhaust problem, depending on the
application. In that regard, other evidence of record indicates that viable
solutions already existed such that there were no widespread efforts of
skilled workers having knowledge of the prior art to find a solution to the
problem. In re Allen, 324 F.2d 993, 997 (CCPA 1963). Specifically, there
is no dispute that rigs with diesel engines have been operating for decades
prior to the development of the invention of the ’828 Patent. It is also
apparent that these rigs dealt with diesel exhaust in one way or another,
probably using the various methods identified by the declarants themselves
such as using a smoke stack, redirecting the exhaust, and water washer
systems. Stmnts A3, B8. There is minimal evidence of record that such
solutions failed to address the diesel exhaust issues generally as asserted by
the declarants. The presented evidence is inadequate to establish that there
existed a persistent problem recognized by those of ordinary skill in the art
for which a solution was not known, or that widespread efforts of skilled
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workers having knowledge of the prior art had failed to find a solution to the
problem.
Instead, the evidence appears to indicate that the solution for
addressing diesel exhaust issues depends upon the particular application of
the diesel engine and the configuration of its exhaust system, as well as the
design of the rig itself. To be clear, the evidence proffered by the Patent
Owner supports the assertion that one or more conventional technique for
dealing with diesel exhaust gas was not effective in the couple of rigs
specifically identified by the declarants. However, rather than objective
evidence indicating a widely recognized problem that has not been solved
despite widespread efforts of skilled workers, we are merely presented with
statements regarding two rigs by two declarants who are also interested
parties to the subject ’828 Patent, such evidence being of less probative
value than objective evidence from disinterested parties. Such testimonial
evidence regarding two rigs from interested declarants is not adequate to
extrapolate therefrom, a finding that such problems were common to rigs
generally, or that there was a long-felt but unfulfilled need in the art.
In our assessment of the evidence pertaining to long-felt but unmet
need, it appears that the invention of the ’828 Patent is another alternative
method of addressing diesel exhaust issues that is more suitable and
effective in particular applications or situations. The Enjet product appears
to address a specific problem experienced by particular rigs identified rather
than address a long-felt but unmet need. Indeed, whereas the Patent Owner
appears to assert non-obviousness based on the fact that no other entities had
a solution to the diesel exhaust problems present on GlobalSantaFe, it could
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very well be that this was due to the fact that conventional rigs typically did
not have the types of diesel exhaust problems experienced by the two rigs
noted, which could not remedied by conventional techniques for dealing
with diesel exhaust.
Hence, in view of the above, the proffered evidence of long-felt but
unmet need is nominal and not persuasive. In our view, what is required to
adequately support the Patent Owner’s assertion of long-felt but unfulfilled
need, is broader-based, objective evidence establishing that the asserted
problem was common to rigs generally, that conventional techniques for
dealing with diesel exhaust were recognized by those in the art as being
inadequate, and evidence that widespread efforts were made by those skilled
in the art without satisfactory resolution. At best, the evidence indicates that
the Enjet device satisfied an unmet need in a couple of rigs in which
conventional methods for dealing with diesel exhaust issues were
ineffective.
In addition, “copying of a claimed invention can be evidence of
nonobviousness.” Pentec, Inc. v. Graphic Controls Corp., 776 F.2d 309,
317 (Fed. Cir. 1985). Copying
may be demonstrated either through internal documents, see
Akamai Techs., Inc. v. Cable & Wireless Internet Servs., Inc.,
344 F.3d 1186, 1196-97 (Fed.Cir.2003); direct evidence such as
disassembling a patented prototype, photographing its features,
and using the photograph as a blueprint to build a virtually
identical replica, see Advanced Display Sys., Inc. v. Kent State
Univ., 212 F.3d 1272, 1285 (Fed.Cir.2000); or access to, and
substantial similarity to, the patented product (as opposed to the
patent), Cable Elec. Prods., Inc. v. Genmark, Inc., 770 F.2d
1015, 1027 (Fed.Cir.1985), overruled on other grounds by,
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Midwest Indus., Inc. v. Karavan Trailers, Inc., 175 F.3d 1356,
1359 (Fed.Cir.1999) (en banc).

Iron Grip Barbell, 392 F.3d at 1325.
The evidence proffered by the Patent Owner does not persuasively
establish copying of the Enjet device. Iron Grip Barbell, 392 F.3d at 1325.
In particular, the illustration of the Enjet device shown in the declaration of
Mr. Leseman substantially mirrors Figure 4 of the ’828 Patent. Decl.
Leseman, Exhibit S9. However, the Patent Owner does not direct us to
information in the record regarding the alleged “copy” of the Enjet device so
that the above-noted factors can be considered to determine whether there
was actual copying.13
To be clear, the proffered evidence supports the finding of access by
Jurong to the patented product via the drawings of the Enjet device, and
“copying” in the general sense that the drawings were referenced in
designing a device that has been found to infringe various claims of the ’828
Patent. Stmnts C1, C2. However, as to the actual copying of the device, the
evidence of record in the present ex parte reexamination is inadequate.
While Azen’s Design was ultimately determined to infringe the device
of claims 1, 13, 14, and 15 of the ’828 Patent in the related litigation, “[n]ot
every competing product that arguably falls within the scope of a patent is

13 We observe that evidence illustrating Azen’s Design alleged to have been
a copy of the Patent Owner’s Enjet device, as well as other evidence
pertinent to copying, was present in the related inter partes reexamination.
2017 WL 1632354 *10. However, as discussed therein, that evidence “does
not persuasively establish copying of the Enjet device,” and instead,
establishes that “the Enjet device and Azen’s design are different from each
other.” Id.
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evidence of copying. Otherwise every infringement suit would
automatically confirm the nonobviousness of the patent. Rather, copying
requires the replication of a specific product.” Iron Grip Barbell Co. Inc. v.
USA Sports, Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004). In that regard,
“more than the mere fact of copying by an accused infringer is needed to
make that action significant to a determination of the obviousness issue.”
Cable Elec. Prods. v. Genmark, Inc., 770 F.2d 1015, 1028 (Fed. Cir. 1985);
see also In re GPAC, 57 F.3d 1573, 1580 (Fed. Cir. 1995).
As to the additional secondary considerations evidence noted above,
we observe that commercial success has been alleged. Stmnt D1, D2.
However, little actual evidence has been provided in support thereof. While
the record indicates that approximately 141 Enjet units have been sold, we
are not provided with proof “that the sales were a direct result of the unique
characteristics of the claimed invention-as opposed to other economic and
commercial factors unrelated to the quality of the patented subject matter.”
In re Huang, 100 F.3d 135, 140 (Fed. Cir. 1996). In addition, there is no
evidence in the record establishing that approximately 141 Enjet units is
commercially successful in the relevant market. See id. (a very weak
showing of commercial success, if any, is shown where there is no
indication of whether the number of units sold represents a substantial
quantity in the relevant market); see also In re Baxter Travenol Labs., 952
F.2d 388, 392 (Fed. Cir. 1991) (“[I]nformation solely on numbers of units
sold is insufficient to establish commercial success.”); Kansas Jack, Inc. v.
Kuhn, 719 F.2d 1144, 1150–51 (Fed. Cir. 1983) (“There was no evidence of
market share, of growth in market share, of replacing earlier units sold by
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others or of dollar amounts, and no evidence of a nexus between sales and
the merits of the invention. Under such circumstances, consideration of the
totality of the evidence, including that relating to commercial success, does
not require a holding that the invention would have been nonobvious at the
time it was made to one skilled in the art.”). The Patent Owner also does not
direct our attention to where it provided information as to the value of these
sales, and sale trends over time that could potentially bolster the assertion of
commercial success.
While the Patent Owner asserts that the Enjet device was featured in
the industry publication Multi-Purpose Progress, European Oil & Gas,
Issue 3 (2008) (Davis Decl. II ¶ 50; App. Br., Exhibit J), this assertion is not
persuasive. The article about MPF Corp. Ltd. does not appear to make
reference to the Enjet device and the insert discussing the Enjet device is set
apart from the article, the insert concluding with sales contact information
for the Patent Owner, such that the insert appears actually to be an
advertisement.
Finally, the email of Mr. Gaitley forwarding the video link provided
by declarant Mr. Davis (Stmnt D4; App. Br., Exhibit I) is relied upon as
providing further support to the efficacy of the Enjet device. However, the
email does not establish that dealing with diesel exhaust was a long-felt but
unmet need, or that other conventional methods for dealing with diesel
exhaust, such as those identified by the Patent Owner, failed to provide
alternative solutions.
Therefore, upon reconsidering the question of obviousness anew, and
in particular, by preponderance of the evidence of obviousness and the
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proffered secondary considerations evidence, we are not persuaded that the
proffered evidence demonstrates nonobviousness of the various claims
discussed above. The proffered evidence of long-felt but unmet need, and
evidence of commercial success, are nominal. While the evidence does
indicate some copying in the sense that a competing device was designed,
that evidence, in our opinion, is inadequate to demonstrate unobviousness.
In summary, on balance, the limited secondary considerations evidence fails
to persuade us that the claims are unobvious and patentable. In this regard,
we note that secondary considerations are only a part of the “totality of the
evidence”; its mere existence does not control the conclusion of
obviousness. Richardson-Vicks Inc. v. Upjohn Co., 122 F.3d 1476, 1483
(Fed. Cir. 1997).

CONCLUSIONS
1. Rejection 1 of claims 1, 3–8, 16, and 19–23 as being obvious
over Nakagami in view of Koelm is:
A. Affirmed with respect to claims 1, 3–5, 16, and 19–22;
and
B. Reversed as to claims 6–8 and 23.
2. Rejection 2 of claims 2, 11, 12, 17, 18, and 24–28 as being
obvious over Nakagami in view of Koelm and Lewis is Affirmed.
3. Rejection 3 of claims 9, 10, and 13–15 as being obvious over
Nakagami in view of Koelm and Sourcebook is:
A. Affirmed as to claims 13–15; and
B. Reversed as to claims 9 and 10.
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SUMMARY
1. The Examiner’s rejections of claims 1–5, 11–22, 24–28 are
Affirmed.
2. The Examiner’s rejections of claims 6–10 and 23 are Reversed.

Requests for extensions of time in this ex parte reexamination
proceeding are governed by 37 C.F.R. § 1.550(c). See 37 C.F.R. § 41.50(f).

AFFIRMED-IN-PART

lb