Ex Parte 6867423 et al

Patent Trial and Appeal Board

Jul 29, 2015

95000526 (P.T.A.B. Jul. 29, 2015)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/000,526 01/04/2010 6867423 067925-0285 7335
22428 7590 07/30/2015
Foley & Lardner LLP
3000 K STREET N.W.
SUITE 600
WASHINGTON, DC 20007-5109
EXAMINER
NGUYEN, MINH T
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
07/30/2015 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
____________

Q.I. PRESS CONTROLS B.V.,
Requester, Respondent

v.

QUAD/TECH, INC.,
Patent Owner, Appellant.
____________

Appeal 2012-002457
Reexamination Control 95/000,526
Patent 6,867,423 B2
Technology Center 3900
____________

Before KEVIN F. TURNER, STEPHEN C. SIU, and JOSIAH C. COCKS,
Administrative Patent Judges.

SIU, Administrative Patent Judge.

DECISION ON REMAND
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Patent 6,867,423 B2

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This case is on remand from the United States Court of Appeals for
the Federal Circuit. Q. I. Press Controls, B.V. v. Michelle K. Lee, 752 F.3d
1371 (Fed. Cir. 2014).

STATEMENT OF THE CASE
This proceeding arose from a request by Requester for an inter partes
reexamination of U.S. Patent 6,867,423 B2, titled “Method and Apparatus
for Visually Inspecting a Substrate on a Printing Press” and issued to Paul
Warner, on March 15, 2005 (“the ’423 patent”). Patent Owner previously
appealed the Examiner’s rejection of claims 1–60 as obvious over
combinations of references involving Maruyama1 and Ross2 and claims 61–
72 as obvious over combinations of references involving Sainio3 and Ross.
PO App. Br. 7–10.4 In a prior decision,5 we concluded that the Examiner
erred in rejecting claims 1–60 as obvious over combinations of references
involving Maruyama and Ross but that the Examiner did not err in rejecting
claims 61–72 as obvious over combinations of references involving Sainio
and Ross. Decision 15.
With respect to the Examiner’s rejection of claims 1–60 over
combinations of references including Maruyama and Ross, the Examiner
stated that Maruyama discloses a printing press, as recited in claim 1, for
example. RAN 9 (citing Maruyama, Abstract, Fig. 1). Patent Owner argued

1 U.S. Patent No. 6,668,144 B2, issued December 23, 2003 (“Maruyama”).
2 U.S. Patent No. 6,605,819 B2, issued August 12, 2003 (“Ross”).
3 U.S. Patent No. 4,887,530, issued December 19, 1989 (“Sainio”).
4 Corrected Appellant’s Brief in Inter Partes Reexamination, filed February
23, 2011 (“PO App. Br.”).
5 Decision on Appeal, dated May 11, 2012 (“Decision” or “Dec.”).
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that Maruyama and Ross, either alone or in combination, fails to disclose “a
visual inspection system for use with a printing press.” PO App. Br. 28.
We concurred with Patent Owner and reversed the Examiner’s rejection of
claims 1–60 as obvious over combinations of references that include
Maruyama and Ross in which Maruyama was relied upon for disclosing a
“printing press.” Decision 7–8, 15.
The United States Court of Appeals for the Federal Circuit upheld the
rejection of claims 61–72 as obvious over the combination of Ross and
Sainio6 based on, among other things, the determination that “Sainio teaches
a printing press” and that “combining Ross and Sainio would have been
obvious to one having skill in the art at the time of the invention.” Q. I.
Press Controls, 752 F.3d at 1379–1380. The Court acknowledged that an
“argument . . . not presented before the Board . . . is thus waived” (id. at
1382) but nevertheless concluded that claims 1–60 of the ’423 Patent “differ
only slightly from claims 61–72, the rejection of which [the Court]
affirmed” (id.), and remanded the case for consideration of a new ground of
rejection of claims 1–60 as obvious over Ross and Sainio. See, e.g., id. at
1383–1384, 1386.
In particular, the Court “do[es] not hold that the Board should always
apply references that are before it affecting some claims to every other claim
on appeal” but that “in this instance” (id. at 1384), the Court directs us to do
just that under the rationale that “the Board has the discretion to issue a new

6 The Federal Circuit also upheld the rejection of claim 18 under 35 U.S.C.
112, 1st paragraph as failing the written description requirement. Q. I. Press
Controls, F.3d at 1380-1382. Thus, claim 18 is no longer subject to appeal
and we will not further consider issues pertaining to claim 18.
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ground of rejection if it has knowledge of one.” Id. at 1383 (citing 37 C.F.R.
§ 41.77(b)). That is, the Court now directs us to exercise this “discretion” to
“analyze[] whether the combination of Sainio and Ross would have rendered
claims 1–60 obvious” and “issue[] a new ground of rejection.” Id. Pursuant
to the Court’s directive, we execute the proceedings consistent with the
opinion of the Court as set forth in detail below.
The ’423 patent describes a process for visually inspecting a web
moving on a printing press. Spec. Abstract.
Claim 1 reads as follows:

1. A visual inspection system configured to be in
optical communication with a substrate of a printing press, said
visual inspection system comprising:
a CMOS image recording device configured to record
images printed on the substrate,
a processing unit coupled to the recording device,
wherein the processing unit is configured to generate an output,
and
an illumination system of the non-strobe, non-
incandescent type, wherein said illumination system includes a
plurality of LEDs wherein said plurality of LEDs are in a
circular configuration.

ANALYSIS

The Examiner previously rejected claims 1–4, 7–15, and 177 under 35
U.S.C. § 103(a) as unpatentable over Maruyama and Ross. See e.g., RAN
9–23. As we understand the directive from the Federal Circuit to determine

7 We do not presently consider the appeal of claim 18 in view of the holding
by the Federal Circuit that claim 18 is invalid.
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if claims 1–4, 7–15, and 17 are patentable over the combination of Ross and
Sainio, we proceed to determine if claims 1–4, 7–15, and 17 are
unpatentable over a combination of references that includes Ross and Sainio,
namely, the combination of Ross, Sainio, and Maruyama. We refer to the
RAN for an express discussion of how the limitations of the claims are met
by the prior art except as otherwise discussed below. See RAN 9–23 and
30–54.
Patent Owner previously argued that Maruyama and Ross fail to
disclose or suggest an “illumination system [that] includes a plurality of
LEDs wherein said plurality of LEDs are in a circular configuration,” that
Ross only “uses four separate illumination systems” and fails to teach “a
single illumination system.” PO App. Br. 25. However, the Federal Circuit
determined that “Ross discloses a circular LED lighting configuration
consisting of a plurality of LEDs.” Q. I. Press Controls, F.3d at 1379.
Patent Owner’s argument is not persuasive.
Patent Owner also argued that Maruyama and Ross fail to disclose “a
printing press.” PO App. Br. 28. Patent Owner provides a similar
argument in support of claims 3, 4, 7, and 10. PO App. Br. 38–39. The
question before us now is whether the combination of Ross, Sainio, and
Maruyama also fails to disclose or suggest a “printing press.” Sainio
discloses “printing press systems.” Sainio 1:9. Also, the Federal Circuit
determined that “Sainio teaches a printing press.” Q. I. Press Controls, F.3d
at 1379. We are not persuaded by Patent Owner’s argument.
Patent Owner argued that it would not have been obvious to one of
ordinary skill in the art to have combined the teachings of Maruyama with
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Ross because “[t]he art of Ross is quite dissimilar to the press control arts,”
“Ross does not have to contend with a rapidly moving substrate, nor does
Ross have to generate a clear image of the substrate,” “Ross does not care
what sort of data is generated,” “Ross only cares that the measurements . . .
are consistent,” and “Ross . . . places few constraints on the quality of
illumination,” for example. PO App. Br. 30–31. Patent Owner also argues
that “[t]he illumination arrangement recited in claim 1 . . . [has] several non-
obvious advantages in the press control arts” and that Ross and Maruyama
fail to disclose or suggest these alleged “advantages.” PO App. Br. 34–36.
These arguments were previously addressed and found to be unpersuasive
with respect to the combination of Ross and Sainio. Decision 9–14; Q. I.
Press Controls, F.3d at 1379–1380. For similar reasons, we are not
persuaded by Patent Owner’s arguments with respect to the combination of
Ross and Maruyama.
In any event, as the Federal Circuit states, “Ross discloses a circular
LED lighting configuration consisting of a plurality of LEDs surrounding an
optical sensor” (id. at 1379) and that “incorporating multiple light sources in
a configuration that would permit a high level of multidirectional lighting
would obtain the predictable result of a greater degree of illumination.” Id.
at 1379–1380. In other words, the Federal Circuit concluded that it would
have been obvious to one of ordinary skill in the art to have combined the
teaching of a printing apparatus that incorporates an illumination system
(e.g., Maruyama) with that of a circular LED lighting configuration of a
plurality of LEDs surrounding an optical sensor (e.g., Ross). Patent Owner’s
argument is not persuasive.
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Patent Owner also argues that it would not have been obvious to one
of ordinary skill in the art to have combined the teachings of Ross and
Maruyama because “the proposed modification of Ross would destroy the
intended function of the LEDs in Ross.” PO App. Br. 37. In particular,
Patent Owner argues that “[i]f Ross were modified . . . to include a single
illumination system driving all LEDs at one time, Ross could not separately
and sequentially apply each pair of different-colored LEDs to the bank
note.” PO App. Br. 37. In other words, Patent Owner argues that Ross
discloses multiple illumination systems rather than one multiple illumination
system. This argument was previously addressed and found to be
unpersuasive. Decision 11–12. In addition, with respect to claims 61–72,
the Federal Circuit concluded that “claims 61–72 . . . only require a
‘plurality of LEDs . . . [and] to not require that the illumination occur at the
same time or that a specific sequence of lights be lit.” Q. I. Press Controls,
F.3d at 1380. Claim 1 recites a similar feature as claim 61. We are not
persuaded by Patent Owner’s argument.
Claim 9 recites that the recording device includes a lens and that the
LEDs surround the lens. Patent Owner argues that Maruyama discloses “a
single LED . . . behind the lens” and Ross “does not disclose a lens” and that
neither reference discloses “LEDs surrounding a lens as recited in claim 9.”
PO App. Br. 38. In other words, Patent Owner argues that none of any one
single reference of either Maruyama or Ross discloses LEDs that surround a
lens. Patent Owner provides a similar argument in support of claim 23. PO
App. Br. 42. We are not persuaded by Patent Owner’s argument at least
because the rejection is based on the combination of Maruyama and Ross
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(and Sainio) and not on any one of the references in isolation. One cannot
show non-obviousness by attacking references individually where the
rejections are based on combinations of references. In re Keller, 642 F.2d
413, 426 (CCPA 1981).
Regarding claim 8, Patent Owner argues that the combination of
Maruyama and Ross discloses “LEDs” but fails to disclose “high intensity
LEDs.” PO App. Br. 39. However, the Federal Circuit concluded that
Sainio discloses “a printing press incorporating a single high intensity
illumination system” and Ross discloses “LED lighting.” Q. I. Press
Controls, F.3d at 1379. Thus, the combination of Ross, Sainio and
Maruyama discloses or suggests “high intensity” LEDs. We are not
persuaded by Patent Owner’s argument.
Regarding claim 14, Patent Owner argues that Maruyama and Ross
fail to disclose or suggest LEDs that are “disposed between the sensor and
the substrate of the printing press.” PO App. Br. 40. Patent Owner provides
a similar argument in support of claim 24. PO App. Br. 42. In particular,
Patent Owner argues that “disposing LEDs between a sensor and a substrate
of a printing press clearly modifies the operation of the sensor and affects
the illumination of the substrate as well as the data recorded by the sensor.”
PO App. Br. 40.
We agree with the Examiner that positioning an LED between a
sensor and substrate, as recited in claim 14 would have been an obvious
modification to one of ordinary skill in the art. For example, as one of
ordinary skill in the art would have understood, the purpose and function of
the LED would have been to illuminate the substrate for imaging by the
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sensor. One of ordinary skill in the art, not being an automaton and
possessing creativity and common sense, would have understood that
illuminating the substrate with an LED positioned between the sensor and
the substrate as opposed to an LED positioning in some other location would
not have resulted in a meaningful difference if the substrate is illuminated in
either case.
Even if Patent Owner’s theory is correct that positioning an LED
between the substrate and sensor would somehow have rendered such a
positioning of the LED non-obvious to one of ordinary skill in the art
because such a placement of an LED “clearly modifies” the operation of the
sensor, Patent Owner has not provided sufficient evidence to show
persuasively that the placement of the LED would, in fact, “clearly modify”
the operation of the sensor, what the alleged clear modification(s) would be,
or how any such clear modification(s), assuming the alleged clear
modification(s) exist at all, would indicate non-obviousness of the placement
of the LED between the sensor and substrate. Indeed, one of ordinary skill
in the art would have understood that the sensor would continue to sense
images on the substrate in the same way as long as the LED illuminates the
image on the substrate regardless of LED placement relative to the sensor
and substrate.
In any event, Ross discloses LEDs placed between a sensor and
substrate. See, e.g., Ross Fig. 1b (illustrating the tip of an LED 18 placed at
a location that is closer to the substrate (lower surface of the structure
illustrated in Fig. 1b) than a sensor (e.g., photodiode 20)). Patent Owner
does not explain a difference between the tip of LED 18 of Ross being closer
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to the substrate than the sensor, or photodiode 20 (i.e., “between” the
photodiode and substrate) and the disputed claim limitation.
Regarding claims 5, 6, and 12, Patent Owner argues that it would not
have been obvious to one of ordinary skill in the art to have combined the
teachings of Riepenhoff with those of Maruyama and Ross for the same
reasons as those provided by Patent Owner regarding the combinability of
Maruyama and Ross. PO App. Br. 41. Regarding claims 19, 20, 25, 29, 30,
33–36, and 39–46, Patent Owner argues that it would not have been obvious
to one of ordinary skill in the art to have combined the teachings of Sainio
with those of Maruyama or Ross “for reasons similar to those discussed with
respect to [the combination of Maruyama and Ross].” PO App. Br. 42.
Regarding claims 21, 31, and 54, Patent Owner argues that it would not have
been obvious to one of ordinary skill in the art to have combined the
teachings of Reynolds with those of Maruyama and Ross “for reasons
similar to those discussed with respect to . . . why the combination and
modification of Ross and Maruyama . . . is improper.” PO App. Br. 41, see
also PO App. Br. 43–44. Regarding claim 32, Patent Owner argues that it
would not have been obvious to one of ordinary skill in the art to have
combined the teachings of Seymour with those of Maruyama and Ross “for
reasons similar to those discussed with respect to . . . why the combination
and modification of Ross and Maruyama . . . . is improper.” PO App. Br.
44-45. We are not persuaded by Patent Owner’s argument at least for the
previously stated reasons regarding the combinability of Maruyama and
Ross.
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Regarding claim 27, Patent Owner argues that Maruyama discloses
“optical units 118-121” but that the “optical units 118-121 are not
configured to record images on the substrate.” PO App. Br. 42–43.
Maruyama discloses “optical units 118 to 121” that “expose and scan the
surfaces” and “form latent images” that are “transferred onto the transported
recording sheet.” Maruyama 3:66-67, 4:2–6. In other words, Maruyama
discloses optical units that record images on a substrate. Patent Owner does
not point out sufficient differences between Maruyama and claim 27.
In addition, Sainio discloses “scanning units 122 and 122A” that scan
“registration marks” on a “web” to provide “a two-dimensional raster scan
of the associated areas of [the] web” Sainio 3:58, 4:38–39, 52–54. In other
words, Sainio discloses that the scanning units record images on a substrate,
or web. Patent Owner does not explain a difference between Sainio and the
features recited in claim 27.
We also note that Ross discloses a “sensor head” that “includes a
photosensor” and “LEDs” in which an image (e.g., a “spot”) on a banknote
(i.e., “substrate”) “is detected by the photosensor.” Ross 6:36–42. In other
words, Ross discloses a scanning unit (i.e., “sensor head” or “photosensor”)
that records an image on a substrate (or banknote). Patent Owner does not
explain a difference between Ross and the features recited in claim 27.
Regarding claim 47, Patent Owner argues that “[n]one of the cited
references teach the recited shutter speed range [of 1 microsecond to 1
second].” PO App. Br. 43. We are not persuaded by Patent Owner for at
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least the reasons set forth by the Examiner and Requester. See, e.g., RAN
44, 3PR Resp. Br. 18–19.8
Regarding claim 28, Patent Owner argues that it would not have been
obvious to one of ordinary skill in the art to have combined the teachings of
Dent with those of Maruyama and Ross “[a] person of ordinary skill in the
art of printing press controls would have had no reason to look to the
information technology/computer support-related teachings [of] Dent.” PO
App. Br. 44. We are not persuaded by Patent Owner for at least the reasons
previously stated in the prior Decision. Decision 12–13.
Patent Owner does not provide additional arguments in support of
claims 11, 13, 15–17, 22, 23, 24, 26, 37, 38, 48–53, and 55–60. PO App. Br.
39, 41, 42, 44, 45.
For at least foregoing reasons and consistent with the directive of the
Federal Circuit, we conclude that claims 1–17 and 19–60 are unpatentable.

CONCLUSION
We affirm the Examiner’s decision to reject claims 19, 20, 23–25, 27,
29, 30, 33–36, and 39–47 under 35 U.S.C. § 103(a) as unpatentable over
Maruyama, Ross, and Sainio; claims 22, 26, 37, 38, and 48–53 under 35
U.S.C. § 103(a) as unpatentable over Maruyama, Ross, Sainio, and Admitted
Prior Art; claims 21, 31, and 54 under 35 U.S.C. § 103(a) as unpatentable
over Maruyama, Ross, Sainio, Admitted Prior Art, and Reynolds; claim 28
under 35 U.S.C. § 103(a) as unpatentable over Maruyama, Ross, Sainio, and

8 Respondent Third Party Requester’s Brief on Appeal, dated March 23,
2011 (“3PR Resp. Br.”).
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Dent; claim 32 under 35 U.S.C. § 103(a) as unpatentable over Maruyama,
Ross, Sainio, and Seymour; claims 55–60 under 35 U.S.C. § 103(a) as
unpatentable over Maruyama, Ross, Sainio, Admitted Prior Art, Reynolds,
and Dent.
We further reject claims 1–4, 7–11, 13–15, and 17 under 35 U.S.C.
§ 103(a) as unpatentable over Maruyama, Ross, and Sainio; claims 5, 6, and
12 under 35 U.S.C. § 103(a) as unpatentable over Maruyama, Ross, Sainio,
and Riepenhoff; and claim 16 under 35 U.S.C. § 103(a) as unpatentable over
Maruyama, Ross, Sainio, and Admitted Prior Art.
Pursuant to 37 C.F.R. § 41.77(a), the above-noted rejections and
affirmance of Examiner’s rejections constitute new grounds of rejection.
Section 41.77(b) provides that “[a] new ground of rejection . . . shall not be
considered final for judicial review.” That section also provides that Patent
Owner, WITHIN ONE MONTH FROM THE DATE OF THE DECISION,
must exercise one of the following two options with respect to the new
grounds of rejection to avoid termination of the appeal proceeding as to the
rejected claims:
(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
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entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

In accordance with 37 C.F.R. § 41.79(a)(1), the “[p]arties to the
appeal may file a request for rehearing of the decision within one month of
the date of: . . . [t]he original decision of the Board under § 41.77(a).” A
request for rehearing must be in compliance with 37 C.F.R. § 41.79(b).
Comments in opposition to the request and additional requests for rehearing
must be in accordance with 37 C.F.R. § 41.79(c)-(d), respectively. Under 37
C.F.R. § 41.79(e), the times for requesting rehearing under paragraph (a) of
this section, for requesting further rehearing under paragraph (c) of this
section, and for submitting comments under paragraph (b) of this section
may not be extended.
An appeal to the United States Court of Appeals for the Federal
Circuit under 35 U.S.C. §§ 141–144 and 315 and 37 C.F.R. § 1.983 for an
inter partes reexamination proceeding “commenced” on or after November
2, 2002 may not be taken “until all parties’ rights to request rehearing have
been exhausted, at which time the decision of the Board is final and
appealable by any party to the appeal to the Board.” 37 C.F.R. § 41.81. See
also MPEP § 2682 (8th ed., Rev. 8, July 2010).
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a). Requests for
extensions of time in this inter partes reexamination proceeding are
governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.
In the event neither party files a request for rehearing within the time
provided in 37 C.F.R. § 41.79, and this decision becomes final and
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appealable under 37 C.F.R. § 41.81, a party seeking judicial review must
timely serve notice on the Director of the United States Patent and
Trademark Office. See 37 C.F.R. §§ 90.1 and 1.983.

AFFIRMED
37 C.F.R. § 41.77

PATENT OWNER:

FOLEY AND LARDNER LLP
Suite 500
3000 K Street NW
Washington, DC 20007

THIRD PARTY REQEUSTER:

STERNE KESSLER GOLDSTEIN & FOX P.L.L.C.
1100 New York Ave., N.W.
Washington, DC 20005