Ex Parte 6867423 et al

Patent Trial and Appeal Board

Apr 5, 2017

95000526 (P.T.A.B. Apr. 5, 2017)

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.
95/000,526 01/04/2010 6867423 067925-0285 7335
22428 7590 04/05/2017
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
04/05/2017 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,

v.

QUAD/TECH, INC.,
Patent Owner.
____________

Appeal 2017-005979
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

NEW DECISION
In an earlier Decision, Appeal No. 2012-002457, mailed July 30, 2015
(“Decision”), and in accordance with instructions from the United States
Court of Appeals for the Federal Circuit, we determined that claims 1–17
and 19–60 are unpatentable under 35 U.S.C. § 103(a) over various
combination of references including Ross and Sainio. Decision 3, 4, 13.
This determination was designated as a new ground of rejection pursuant to
37 C.F.R. § 41.77(b). Id. Patent Owner elected to reopen prosecution under
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37 C.F.R. § 41.77(b)(1) (“Patent Owner’s Request to Reopen Prosecution,”
filed August 31, 2015, “PO Request”) in which Patent Owner proposed
claim amendments to claims 1, 3, 5, 7–12. PO Request 8–9.
Requester filed comments pursuant to 37 C.F.R. § 41.77(c) in
response to Patent Owner's request to reopen prosecution (“Third Party
Requester's Comments under 37 C.F.R. § 41.77(c) In Response to Patent
Owner’s Request to Reopen Prosecution,” filed September 30, 3015, “3PR
Comments”) and argued that Patent Owner’s proposed amendments
constitute new matter lacking written description support under 35 U.S.C.
§ 112, first paragraph; are unpatentable as indefinite under 35 U.S.C. § 112,
second paragraph; and that claims 1–60 are unpatentable under 35 U.S.C.
§ 103(a). 3PR Comments 7–19.
In the Order Remanding Inter Partes Reexamination Under 37 C.F.R.
§ 41.77(d) to the Examiner, dated February 11, 2016 (“Remand”) at 2, the
matter was remanded to the Examiner for consideration of Patent Owner's
and Requester's comments and evidence as they pertain to grounds of
rejection. We also noted that notwithstanding the alleged failure of Patent
Owner to serve “any exhibits” or the alleged service of Patent Owner’s
Request to Mr. David D. Langfitt (alleged to be “purely litigation counsel
for Requester”), “Patent Owner’s timely filing of the Request . . . will be
considered in this particular instance.” Remand 2.
In accordance with 37 C.F.R. § 41.77(e), the Examiner rejects the
claims as follows:
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1. claims 1–17 and 19–60 under 35 U.S.C. § 112, first paragraph as
failing the written description requirement and under 35 U.S.C.
§ 112, second paragraph as indefinite;
2. claims 1–4, 7–11, 13–15, and 17, 19, 20, 23–25, 27, 29, 30, 33–36,
39–47 under 35 U.S.C. § 103(a) as unpatentable over Maruyama,
Sainio and Ross;
3. claims 5, 6, and 12 under 35 U.S.C. § 103(a) as unpatentable over
Maruyama, Sainio, Ross, and Riepenhoff;
4. claims 16, 22, 26, 37, 38, and 48–53 under 35 U.S.C. § 103(a) as
unpatentable over Maruyama, Sainio, Ross, and Admitted Prior
Art;
5. claims under 35 U.S.C. § 103(a) as unpatentable over Maruyama,
Sainio and Ross;
6. claims 21, 31, and 54 under 35 U.S.C. § 103(a) as unpatentable
over Maruyama, Sainio, Ross, Admitted Prior Art, and Reynolds;
7. claim 28 under 35 U.S.C. § 103(a) as unpatentable over
Maruyama, Sainio, Ross, and Dent;
8. claim 32 under 35 U.S.C. § 103(a) as unpatentable over
Maruyama, Sainio, Ross, and Seymour; and
9. claims 55–60 under 35 U.S.C. § 103(a) as unpatentable over
Maruyama, Sainio, Ross, Admitted Prior Art, Reynolds, and Dent.
Examiner’s Determination, dated July 22, 2016, (“Examiner’s
Determination”) 9–10 and 14–17.
In response to the Examiner’s Determination, Patent Owner filed
“Patent Owner’s Comments on Examiner’s Determination Under 37 C.F.R.
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§ 41.77(E)” on August 22, 2016 (“PO Comments on Exr’s Determ.”).
Requester filed “Third Party Requester’s Reply to Patent Owner’s
Comments on the Examiner’s Determination” on September 22, 2016 (“3PR
Reply to PO Comments”).
Pursuant to 37 C.F.R. § 41.77(f), the proceeding has been returned to
the Board so that we may reconsider the matter and issue a new decision.

35 U.S.C. § 112, first paragraph – Claims 1–17 and 19–60

Patent Owner amends claim 1, for example, to recite “circuitry
configured to activate all of the plurality of LEDs of the illumination system
together at a same time in the circular configuration to illuminate the
substrate” and cites support in the Specification at “Figure 2 (see, e.g.,
reference numbers 48 and 66), Figure 3 (see e.g., reference number 67),
column 4, line 57 through column 5, line 6, and column 5, line 66 through
column 6, line 16.” PO Request 8, see also PO Comments on Exr’s Determ.
3–7. Requester argues that the cited portions of the Specification fail to
provide sufficient written description support for the newly amended claim
feature. 3PR Comments 7–10. The Examiner agrees with Requester.
Examiner’s Determination 4–7. We agree with the Examiner and Requester.
The cited portions of the Specification disclose an “illumination
system 66” that includes an “LED light array 67” with lights “around the
lens . . . [in a] circular configuration.” Spec. 4:57–65. The Specification
also discloses a “side frame unit 48 . . . [that] sends control signals to the
image recording device 64 and the illumination system 66” and that “the
illumination system 66 and the image recording device 64 simultaneously
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records image data that is representative of . . . the printed image” such that
“all rows of the . . . image are recorded.” Spec. 5:66 – 6:12. We also note
that Figure 2 of the Specification illustrates a block diagram containing a
“single board computer,” “camera interface board,” and “power supply”
(collective, “reference number 48,” cited by Patent Owner) and an
“illumination system” (i.e., “reference number 67,” cited by Patent Owner)
and Figure 3 illustrates a light attached to the front surface of a camera (i.e.,
“reference number 67,” cited by Patent Owner). Hence, the portions of the
Specification cited by Patent Owner disclose an illumination system with an
array of lights around a lens and control signals being sent from a recording
device to an illumination system such that all rows of an image are recorded.
The portions of the Specification cited by Patent Owner do not also disclose
circuitry configured to activate all of the plurality of LEDs of the
illumination system together at a same time in the circular configuration to
illuminate the substrate.
Patent Owner argues that the Specification discloses that “the entire
‘illumination system 66’ is illuminated” and, hence, according to Patent
Owner, discloses circuitry that “illuminate[s] all of the LEDs of the LED
array at the same time as claimed.” PO Comments on Exr’s Determ. 5–6
(citing Spec. 5:66 – 6:6). We note that the cited portion of the Specification
does not disclose that “the entire illumination system 66 is illuminated,” as
Patent Owner contends. Rather, the cited portion of the Specification merely
recites that “web 12 is illuminated by the illumination system 66.” We note
that the “web” would be illuminated by the “illumination system” whether
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all of the LEDs or just a subset of LEDs of the illumination system are “on”
at the same time.
Patent Owner argues that “the LEDs are arranged in a circular pattern
and plainly would be illuminated together as part of the illumination system
66.” PO Comments on Exr’s Determ. 6. Patent Owner does not explain
how the mere arrangement of LEDs in a circular pattern would mean that
each of the LEDs must be illuminated “at a same time.”
Patent Owner argues that “the sole purpose of illumination system 66 .
. . is to illuminate the field of view” and that “[i]n view of this stated purpose
. . . a skilled person would have understood . . . that . . . [the] illumination
system 66 . . . illuminate[s] the web with the entire LED array to best
illuminate the field of view.” PO Comments on Exr’s Determ. 6. Even
assuming that the “sole purpose” of the illumination system is to “illuminate
the field of view,” Patent Owner does not explain sufficiently how this
presumed “sole purpose” indicates that Patent Owner had possession of
every LED in the array of LEDs being illuminated “at a same time.” For
example, if a smaller subset of LEDs were to be illuminated, the field of
view would still be illuminated by those LEDs that are illuminated.
Patent Owner argues that “[t]he Board’s previous finding” of
obviousness “regarding the desires of a skilled person” indicates that “LEDs
of the array [must] be illuminated together absent statements in the
specification to the contrary.” PO Comments on Exr’s Determ. 6–7. Patent
Owner does not explain sufficiently the relevance of obviousness findings to
the question of sufficient written description support. See Tronzo v.
Bioment, Inc., 1154, 1158 (Fed. Cir. 1998) (“A disclosure in a parent
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application that merely renders the later-claimed invention obvious is not
sufficient to meet the written description requirement; the disclosure must
describe the claimed invention with all its limitation.”) Therefore, we are
not persuaded by Patent Owner’s argument.

35 U.S.C. § 112, second paragraph (and sixth paragraph) – Claims 1–17 and
19–60

Requester argues that the newly amended claims “are indefinite under
35 U.S.C. § 112, ¶2 and/or fail to comply with 35 U.S.C. § 112, ¶6” and that
the Specification “does not clearly disclose the structure that performs the
function term,” rendering “the claim . . . indefinite [under 35 U.S.C. § 112,
second paragraph].” 3PR Comments 11. The Examiner agrees with
Requester and finds that the newly added “[c]laim limitation . . . has/have
been interpreted under 35 U.S.C. § 112(f) . . . [for using] a generic
placeholder ‘circuitry’ coupled with functional language.” Examiner’s
Determination 9. However, our reviewing court has held that “the term
‘circuitry,’ by itself, connotes structure” and “connotes sufficient structure to
avoid 112 ¶ 6 treatment.” Massachusetts Institute of Technology and
Electronics for Imaging, Inc. v. Abacus Software, 462 F.3d 1344, 1355 (Fed.
Cir. 2006). Here, we also conclude that the term “circuitry” of the newly
amended claims renders either § 112(f) or § 112 ¶ 6 inapplicable.
Thus, we cannot agree with the proposed rejection of claims 1–17 and
19–60 under 35 U.S.C. § 112, second paragraph (and sixth paragraph).

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Obviousness
Configured to activate all of the plurality of LEDs together at a same time
Claim 1, as amended, recites a “circuitry configured to activate all of
the plurality of LEDs of the illumination system together at a same time.”
Patent Owner argues that the combination of Maruyama, Ross, and Sainio
fails to disclose or suggest this feature. PO Request 11–14, see also PO
Comments on Exr’s Determ. 9–11. We disagree with Patent Owner’s
arguments for at least the reasons set forth by the Examiner and Requester.
Examiner’s Determination 10–12, 3PR Comments 11–14, 3PR Reply to PO
Comments 18–23.
For example, Maruyama discloses an “LED light may be applied .
obliquely to the surface” of a substrate (Maruyama 4:39-40) and Ross
discloses that it was known to one of ordinary skill in the art at the time of
the invention to use a “light source” that includes more than one “ light
emitting diode[s] (LED)” that are “diametrically opposite.” Ross 7:43–47.
The combination of the known feature of using an LED light to illuminate a
substrate (Maruyama or Ross) with the known feature that multiple LED
lights may be used to illuminate a substrate (Ross) would have resulted in no
more than the predictable and expected result of illumination of a substrate
with LEDs. “The combination of familiar elements according to known
methods is likely to be obvious when it does no more than yield predictable
results.” KSR Int’l Co. v. Teleflex, Inc., 550 U.S. 398, 416 (2007)
Also, as discussed above, Patent Owner fails to demonstrate
persuasively that the Specification provides sufficient written description
support for the disputed claim feature (i.e., LEDS illuminated “together at a
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same time”). Instead, with respect to written description support for the
disputed claim feature, Patent Owner argues that the Specification discloses
that “web 12 is illuminated by the illumination system 66” and that LEDs
are arranged “around the lens.” Hence, Patent Owner takes the position that
LEDs illuminated “at a same time” is the same as LEDs that are situated
“around the lens” and/or LEDs that are used in an “illumination system” to
“illuminate.” Even assuming Patent Owner to be correct that illuminating
LEDs “at a same time” is the same as situating LEDs around a lens and/or
using LEDs to “illuminate,” Patent Owner does not demonstrate
persuasively that the combination of Ross, Sainio, and Maruyama fails to
disclose or suggest this feature.
For example, Maruyama discloses an “LED” that is “disposed so that
the LED light may be applied obliquely to the surface of the recording
sheet” that is located “around” a sensor or lens, as illustrated in Fig. 2 of
Maruyama, Sainio discloses a lamp that illuminates a web, and Ross
discloses LEDs mounted in peripheral apertures that surround a central
aperture and photodiode (i.e., a “lens”). See e.g., Maruyama 4:27, 39–41,
Fig. 2; Sainio 4:37–42; Ross 7:33–52, Figs. 1a, 1b. Hence, each of
Maruyama, Sainio, and Ross discloses an “illumination system” that
“illuminates.” Maruyama and Ross, at least, both further disclose an LED
situated “around” a lens.
Accordingly, while we disagree with Patent Owner’s contention that
one of skill in the art would have understood that an illumination system
with LEDs that illuminate and are situated “around” a lens to mean that all
LEDs must illuminate “at a same time,” nevertheless, assuming Patent
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Owner to be correct the claims are not distinguished from the prior art. In
particular, even if one of skill in the art would have understood that an
“illumination system” that illuminates with LEDs or an illumination system
with LEDs “around” a lens would necessitate all LEDs illuminating “at the
same time,” Patent Owner does not explain persuasively how these features,
as disclosed by the combination of Maruyama, Sainio, and Ross, differs
from the claimed invention.
Patent Owner also argues that it would not have been obvious to one
of skill in the art to have combined Ross with Sainio or Maruyama because,
according to Patent Owner, doing so would “render . . . Ross unsatisfactory
for its intended purpose” and “change the basic principle of operation of
Ross.” PO Request 14–18, see also PO Comments on Exr’s Determ. 11–16.
The issue of whether it would have been obvious to one of ordinary skill in
the art to have combined the teachings of Ross with Sainio was previously
raised by Patent Owner and was previously addressed by the Federal Circuit.
See e.g., Q.I. Press Controls, B.V. v. Lee, 752 F.3d 1371, 1379 (Fed. Cir.
2014) (stating that “combining Ross and Sainio would have been obvious to
one having skill in the art at the time of the invention”). The issue of
whether it would have been obvious to one of ordinary skill in the art to have
combined the teachings of Ross with Maruyama was previously raised by
Patent Owner and was previously addressed in our previous decision. See
e.g., Decision (dated July 30, 2015) 5–7. In addition, as explained in the
Decision (dated July 30, 2015), the Federal Circuit also “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
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(e.g., Maruyama) with that of a circular LED lighting configuration of a
plurality of LEDs surrounding an optical sensor (e.g., Ross).” Decision 6
(citing Q.I. Press Controls, B.V. v. Lee, 752 F.3d at 1379).
Patent Owner does not provide additional arguments in support of the
other claims subject to appeal or the other cited references of record.
CONCLUSION
Claims 19, 20, 23–25, 27, 29, 30, 33–36, and 39–47 are unpatentable
under 35 U.S.C. § 103(a) over Maruyama, Ross, and Sainio; claims 22, 26,
37, 38, and 48–53 are unpatentable under 35 U.S.C. § 103(a) as unpatentable
over Maruyama, Ross, Sainio, and Admitted Prior Art; claims 21, 31, and 54
are unpatentable under 35 U.S.C. § 103(a) over Maruyama, Ross, Sainio,
Admitted Prior Art, and Reynolds; claim 28 is unpatentable under 35 U.S.C.
§ 103(a) as unpatentable over Maruyama, Ross, Sainio, and Dent; claim 32
is unpatentable under 35 U.S.C. § 103(a) over Maruyama, Ross, Sainio, and
Seymour; and claims 55–60 are unpatentable under 35 U.S.C. § 103(a) over
Maruyama, Ross, Sainio, Admitted Prior Art, Reynolds, and Dent.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a).
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
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.

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AFFIRMED