Ex Parte 6867423 et al

Board of Patent Appeals and Interferences

May 11, 2012

95000526 (B.P.A.I. May. 11, 2012)

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 05/11/2012
FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET NW
WASHINGTON, DC 20007
EXAMINER
TIBBITS, PIA FLORENCE
ART UNIT PAPER NUMBER
3992
MAIL DATE DELIVERY MODE
05/11/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Q. I. PRESS CONTROLS B.V.
Respondent
v.

QUAD/TECH, INC.
Patent Owner, Appellant
________

Appeal 2012-002457
Inter partes 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 APPEAL
Appellant appeals under 35 U.S.C. §§ 134(b) and 306 from a Right of
Appeal Notice rejecting claims 1-72. We have jurisdiction under 35 U.S.C.
§§ 134(b) and 306.

STATEMENT OF THE CASE
This proceeding arose from a third party request for inter partes
reexamination of United States Patent 6,867,423 B2, (the ‘423 patent) titled
“Method and Apparatus for Visually Inspecting a Substrate on a Printing
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Press” and issued to Paul Warner on March 15, 2005. An oral hearing was
conducted on May 2, 2012.
The ‘423 patent describes a method and apparatus for visually
inspecting a web on a printing press (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.
(App. Br. 47, Claims Appendix).

The Examiner relied upon the following prior art references:
Reynolds US 4,736,446 Apr. 5, 1988
Sainio US 4,887,530 Dec. 19, 1989
Dent US 5,884,073 Mar. 16, 1999
Seymour US 5,967,050 Oct. 19, 1999
Ross US 6,605,819 B2 Aug. 12, 2003
Maruyama US 6,668,144 B2 Dec. 23, 2003
Reipenhoff US 6,691,620 B2 Feb. 17, 2004
Warner US 6,867,423 B2 Mar. 15, 20051

The rejections on appeal follow:
Claims 14 and 24 stand rejected under 35 U.S.C. 112, 1st paragraph as
failing to comply with the written description requirement.
Claim 18 stands rejected under 35 U.S.C. 112, 2nd paragraph.

1 Admitted Prior Art, original Patent of this Appeal.
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Claims 1-4, 7-11, 13-15, 17, and 18 stand rejected under 35 U.S.C.
103(a) as obvious over Maruyama and Ross.
Claims 5, 6, and 12 stand rejected under 35 U.S.C. 103(a) as obvious
over Maruyama, Ross, and Reipenhoff.
Claim 16 stands rejected under 35 U.S.C. 103(a) as obvious over
Maruyama, Ross, and Admitted Prior Art.
Claims 19, 20, 23-25, 27, 29, 30, 33-36, and 39-47 stand rejected
under 35 U.S.C. 103(a) as obvious over Maruyama, Ross, and Sainio.
Claims 22, 26, 37, 38, and 48-53 stand rejected under 35 U.S.C.
103(a) as obvious over Maruyama, Ross, Sainio, and Admitted Prior Art.
Claims 21, 31, and 54 stand rejected under 35 U.S.C. 103(a) as
obvious over Maruyama, Ross, Sainio, Admitted Prior Art, and Reynolds.
Claims 22, 26, 37, 38, and 48-53 stand rejected under 35 U.S.C.
103(a) as obvious over Maruyama, Ross, Sainio, and Admitted Prior Art.
Claim 28 stands rejected under 35 U.S.C. 103(a) as obvious over
Maruyama, Ross, Sainio, and Dent.
Claim 32 stands rejected under 35 U.S.C. 103(a) as obvious over
Maruyama, Ross, Sainio, and Seymour.
Claims 55-60 stands rejected under 35 U.S.C. 103(a) as obvious over
Maruyama, Ross, Sainio, Admitted Prior Art, Reynolds, and Dent.
Claims 61-64, 71, and 72 stand rejected under 35 U.S.C. 103(a) as
obvious over Sainio and Ross.
Claim 65 stands rejected under 35 U.S.C. 103(a) as obvious over
Sainio, Ross, and Dent.
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Claims 66-70 stand rejected under 35 U.S.C. 103(a) as obvious over
Sainio, Ross, Dent, and Admitted Prior Art.

ISSUE
Did the Examiner err in rejecting claims 1-72?

PRINCIPLES OF LAW

Under the written description requirement of 35 U.S.C. § 112, the
disclosure of the application relied upon must reasonably convey to the
artisan that, as of the filing date of the application, the inventor had
possession of the later claimed subject matter. Vas-Cath Inc. v. Mahurkar,
935 F.2d 1555, 1563 (Fed. Cir. 1991).
The question of obviousness is resolved on the basis of underlying
factual determinations including (1) the scope and content of the prior art,
(2) any differences between the claimed subject matter and the prior art, and
(3) the level of skill in the art. Graham v. John Deere Co. of Kansas, 383
U.S. 1, 17-18 (1966).
“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).

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ANALYSIS
Claims 14 and 24
The Examiner finds that the Specification fails to disclose that the
LEDs are disposed between the sensor and the substrate, as recited in claim
14. However, as Appellant points out, the Specification discloses an
“illumination system” (i.e., LEDs) positioned between a substrate (e.g., Fig.
2, element 12) and an “image recording device” (i.e., “sensor”) (e.g., Fig. 2,
element 64). We therefore disagree with the Examiner that the Specification
supposedly fails to disclose this feature.
Respondent argues that if the LEDs are disposed between the sensor
and the substrate as recited in claim 14, “the visual inspection system cannot
function” (Respondent Br. 2). We do not understand how this statement,
even if assumed to be true, demonstrates that claim 14 fails to comply with
the written description requirement. In any event, we disagree that LEDs
disposed between the sensor and the substrate would mean that “the [optical]
pathway is blocked” by the LEDs as illustrated in the Specification at Fig. 3
in which LEDs 67 are positioned between the sensor (i.e., element 64) and a
substrate (not illustrated in Fig. 3 but presumed to be in front of the lens as
illustrated). In connection with at least this embodiment, Respondent has
not demonstrated that the LEDs block the optical pathway through the lens.
Claim 24 recites a similar feature.
Thus, the Examiner erred in rejecting claims 14 and 24 as failing to
comply with the written description requirement.

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Claim 18
Claim 18 recites that the substrate is unsupported at the point where
the substrate is configured to be illuminated by the illumination
arrangement. The Examiner finds that the Specification fails to provide this
disclosure. We agree with the Examiner.
Appellant argues that the Specification discloses this feature in Figs. 1
and 2 (App. Br. 13). However, Fig. 1 of the Specification merely illustrates
“a representative web offset printing press” (col. 2, ll. 35-36) and Fig. 2
illustrates “a visual inspection system” (col. 2, ll. 36). Appellant does not
specifically point out where both a substrate is unsupported and where that
portion of the substrate is illuminated by the illumination arrangement in
either Fig. 1 or Fig. 2. Appellant points to a portion of web illustrated in
Fig. 1 that is supposedly “unsupported” (App. Br. 13) but does not indicate
that the portion of web highlighted is configured to be illuminated by the
illumination arrangement as recited in claim 18. In fact, Fig. 1 does not
illustrate an illumination arrangement at all much less where the illumination
arrangement would be located or what portions of the web would be
illuminated (or not illuminated).
Thus, the Examiner did not err in rejecting claim 18.

Claims 1-17 and 19-60 – Maruyama and Ross
Claim 1 recites a visual inspection system in optical communication
with a substrate of a printing press in which a recording device records
images printed on the substrate (of the printing press).
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Appellant argues that “neither Maruyama nor Ross . . . disclose . . . or
suggest . . . a printing press” (App. Br. 28). We agree with Appellant.
Maruyama discloses “[a]n image forming apparatus such as a copier or a
laser printer” (col. 1, ll. 12-13) and Ross discloses a system “for media
recognition, validation and screening” (col. 1, ll. 28-29). The Examiner has
not demonstrated that the combination of Maruyama and Ross also discloses
or suggests a visual inspection system in communication with a substrate of
a printing press as required by claim 1.
The Respondent argues that Maruyama “prints an image on paper by
moving the paper past or through a plurality of color printing or processing
stations” (Respondent Br. 12) but does not provide an adequate showing that
Maruyama discloses a printing press. For example, even assuming that
Maruyama prints an image on paper and moves the paper past “printing
stations,” Respondent has not demonstrated that merely printing images on
paper or moving the paper past stations would have indicated a “printing
press” to one of ordinary skill in the art. Indeed, Maruyama characterizes its
system as simply “an image forming apparatus such as a copier or a laser
printer” (col. 1, l. 9), which Respondent has not demonstrated to be the same
as a “printing press” as would have been understood by one of ordinary skill
in the art.
Independent claims 3, 5, and 7-12 recite a similar feature and the
Examiner does not rely on any of Reynolds, Sainio, Dent, Seymour,
Riepenhoff, or Admitted Prior Art to provide this feature. Affirmance of the
rejection of claim 18 (as described above) renders it unnecessary to reach the
propriety of the Examiner’s decision to reject claim 18 on a different basis.
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Cf. In re Gleave, 560 F.3d 1331, 1338 (Fed. Cir. 2009). As such, we need
not reach the propriety of the rejection of claim 18 over Maruyama and
Ross.
Thus, the Examiner erred in rejecting claims 1-17 and 19-60.

Claims 61-72 – Sainio and Ross
The Examiner finds that the combination of Sainio and Ross discloses
or suggests the features recited in claim 61-64, 71, and 72 (RAN 54-59).
Appellant presents the same arguments in support of claims 61-64 as
previously presented for claims 1-4, 7, and 10 over Maruyama and Ross
(App. Br. 45 – citing arguments presented for claims in “Groups I and III”
and “with respect to Group XI”). However, the arguments cited refer to
Maruyama and Ross (Group I: App. Br. 15-38; Group III: App. Br. 38-39;
and Group XI: App. Br. 42) while the Examiner rejects claims 61-64, 71,
and 72 over Sainio and Ross.
For example, Appellant argues that Maruyama fails to disclose or
suggest a “printing press” (see, e.g., App. Br. 28). However, Sainio (which
is the reference applied to claims 61-64, 71, and 72) discloses “a web-fed
printing system” (see, e.g., col. 3, l. 28). Since Appellant does not appear to
directly address the Sainio reference with respect to the disclosure of a
printing press, Appellant does not indicate how Sainio’s web-fed printing
system is not reasonably understood as forming a “printing press” as recited
in claim 61, for example.
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Claim 61 recites a plurality of LEDs disposed in a configuration. As
the Examiner points out, Sainio discloses a printing press (e.g., “web-fed
printing system” – col. 3, l. 28) that includes an illumination system (e.g.,
“high-intensity lamp” – col. 4, ll. 39-40) and Ross discloses LEDs in a
(circular) configuration (see, e.g., Figs. 1A and 1B). Appellant argues that it
would not have been obvious to one of ordinary skill in the art to have
incorporated a plurality of LEDs (Ross) in a system in a printing press (e.g.,
Sainio) because “[t]he art of Ross is quite dissimilar to the press control arts”
(App. Br. 30), because “there was no apparent reason for a person of skill in
the art to make the combination” (App. Br. 36) and because “no reasonable
designer in the print industry would look to Ross when designing an
illumination system for a printing press” (Declaration of John Seymour, ¶
[0009]). We disagree with Appellant for at least the reasons set forth by the
Respondent (Respondent Br. 5-11 and 13).
As described previously, Sainio discloses the operation of a high-
intensity lamp in a printing press environment (see, e.g., col. 4, ll. 39-40).
As Appellant points out, one of ordinary skill in the art would have desired a
high amount of illumination while operating a printing press (see, e.g.,
Declaration of John Seymour, ¶¶ [0014]-[0015]). Some reasons provided by
Mr. John Seymour as to why one of ordinary skill in the art operating a
printing press would have desired a high amount of illumination include: 1)
because certain color inks may be “difficult to recognize” on certain types of
paper (e.g., newsprint) under insufficient lighting conditions (see, e.g.,
Declaration of John Seymour, ¶ [0016]); or 2) because of problems
associated with misalignment of the web, misalignment between colors of
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ink in an image, and the measurement of misalignments (see, e.g.,
Declaration of John Seymour, ¶¶ [0012]-[0013]). Mr. John Seymour further
states that one of ordinary skill in the art would have also desired
“multidirectional lighting” in order to overcome problems associated with
certain color inks being “difficult to recognize” (see, e.g., Declaration of
John Seymour, ¶¶ [0016]-[0017]).
Since one of ordinary skill in the art would have desired a high
amount of illumination, it would have been obvious to one of ordinary skill
in the art to have increased the amount of light to a level that would provide
sufficient illumination. The level of skill of one of ordinary skill in the art is
high such that one of ordinary skill in the art would have known that one
method (of a finite number of choices of methods) to increase the amount of
light would be to use multiple light sources. Ross further discloses the use
of multiple lights demonstrating that one of ordinary skill in the art would
have known about the concept of utilizing more than one light at the same
time.
In addition, one of ordinary skill in the art operating a printing press
(e.g., Sainio) would have desired “multidirectional lighting” (see, e.g.,
Declaration of John Seymour, ¶¶ [0016]-[0017]), which would have
prompted one of ordinary skill in the art to have arranged multiple lights
(e.g., LEDs) in a configuration that would cause light to be provided in
different directions (i.e., “multidirectional”). As stated above, the level of
skill in the art is high such that one of ordinary skill in the art would have
known that utilizing light sources that are each directed in a different
direction would have resulted in light provided in different directions (or
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“multi” directions). Ross discloses an example of such a configuration (i.e.,
light sources arranged in a circular configuration) that would have been
known to one of ordinary skill in the art.
Given that one of ordinary skill in the art would have desired a higher
level of multidirectional illumination, that the level of skill in the art is high
such that one of ordinary skill in the art would have understood that multiple
light sources provide more light than a single light source and that light
sources arranged in certain configurations (e.g., in a circle) provide
multidirectional lighting, and that Ross explicitly discloses the use of
multiple light sources providing multidirectional lighting, it would have
been obvious to one of ordinary skill in the art to have incorporated Ross
(the use of multiple light sources to provide more multidirectional
illumination) with Sainio (the use of a high-intensity lamp in a printing
press) to achieve the predictable result of a high level of multidirectional
illumination for a substrate (e.g., web) in a printing press.
Appellant argues that the illumination system of Ross differs from the
illumination system recited in claim 1 (or by inference claim 61) because,
according to Appellant, the illumination system of Ross is actually “multiple
illumination systems” (Declaration of John Seymour, ¶ [0010]) rather than
an illumination system. Appellant does not indicate a specialized definition
of a “system” in the Specification. In the absence of such a definition, we
broadly but reasonably construe the term “system” in light of the
Specification using a plain and customary meaning of the term as would
have been understood by one of ordinary skill in the art to include any
“group of devices . . . for . . . serving a common purpose” (Merriam-
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Webster’s Collegiate Dictionary, 11th Edition, 2005, p. 1269, col. 2). We
find no significant difference between a group of devices for serving a
common purpose (i.e., a “system” as would have been understood by one of
ordinary skill in the art) and Ross’ group of LEDs (or “devices”) for serving
the common purpose of illuminating an object.
Appellant further argues that incorporating multiple light sources (as
in Ross) into a single illumination system (presumably the Sainio system)
would supposedly have destroyed “the intended function of the LEDs in the
system of Ross” (App. Br. 37). We disagree with Appellant. Appellant does
not sufficiently demonstrate that incorporating the principle of multiple light
sources arranged in a configuration that permits a high level of
“multidirectional lighting” (Ross) into the Sainio system of illuminating a
substrate in a printing press to obtain the predictable result of multiple light
sources illuminating a substrate in a printing press would have resulted in
destruction of the intended purpose (illuminating an object) of either Sainio
or Ross.
Appellant does not appear to provide any additional arguments in
support of claims 62-64, 71, and 72.
Regarding claims 65-70, Appellant also argues that one of skill in the
art (of printing presses) “would have had no reason to look to the . . .
technology/computer support-related teachings [of] Dent” (App. Br. 44).
However, as described above, Sainio discloses the operation of a printing
press. Sainio further discloses the printing press as including a computer or
processor (Fig. 1) that includes a central processing unit (CPU 144), DMA
controller 38, RAM 152, ROM 150, and various other computer components
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(Fig. 1). Thus, Sainio demonstrates that the level of skill in the art of
printing presses is high as to include computer technology (given that the
printing press of Sainio operates via a computer).
Appellant does not appear to provide any specific reasons as to why
one of ordinary skill in the art (who understands computer technology)
would not refer to a reference pertaining to “computer-related” teachings.
Since one of ordinary skill in the art of printing presses understands and
utilizes computer technology (Sainio), we disagree with Appellant’s
contention that one of ordinary skill in the art would supposedly not have
looked to references pertaining to computer-related teachings (e.g., Dent).
Appellant also does not provide additional arguments in support of the
claims with respect to Dent or Admitted Prior Art.
We have considered Appellant’s arguments challenging the
Examiner’s rejections to claims 61-72; however, we are not persuaded that
the Examiner failed to establish an adequate prima facie basis for rejecting
those claims. Once the Examiner has established a prima facie case of
obviousness, the burden shifts to Appellant to show evidence or persuasive
argument that would overcome that prima facie case. In re Oetiker, 977
F.2d 1443, 1445 (Fed. Cir. 1992).
Here, in attempting to meet its burden, Appellant points to statements
made by Respondent in a newsletter describing aspects of a commercial
product associated with a printing press that Respondent is offering to its
customers. In particular, Appellant argues that Respondent praised the use
of “state-of-the-art LED lighting technology” with a “higher quality of
lumen” (App. Br. 17 citing Register Focus, Exhibit 1, 2008, p. 3, col. 2) that
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is “innovative” (App. Br. 19 citing Markless Register, Exhibit 2, p. 2) and a
“new generation IRS camera” (App. Br. 18 citing Register Focus, Exhibit 1,
2008, p. 3, col. 1). Hence, Respondent appears to praise the use of LED
lighting technology and the use of a new generation camera operable with a
printing press.
However, Sainio discloses “a high-intensity lamp” (col. 4, l. 39-40)
and imaging devices (i.e., “optical line scanning units” – see e.g., col. 3, l.
58) and Ross also discloses LED lighting and a camera. Both references
predate the ‘623 patent. Even assuming that using high-intensity lamps
(e.g., LED lighting) and an imaging device (e.g., camera) is praiseworthy (as
Appellant argues), and presumably touted to customers for underlying
commercial benefit, the features stem from what was known in the prior art.
Hence, Appellant has not shown the required nexus. Tokai Corp. v. Easton
Enters., Inc., 632 F.3d 1358, 1369 (Fed. Cir. 2011) (“If commercial success
is due to an element in the prior art, no nexus exists.” (citation omitted);
Ormco Corp. v. Align Technology, Inc., 463 F.3d 1299, 1312 (Fed. Cir.
2006) (“[I]f the feature that creates the commercial success was known in
the prior art, the success is not pertinent.”).
We have weighed the evidence offered by Appellant in urging the
non-obviousness of its claims alongside the Examiner’s prima facie case of
obviousness. On balance, we are not persuaded that the evidence of non-
obviousness outweighs the strong evidence of obviousness. On this record,
we conclude the Examiner did not err in rejecting claims 61-72.

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CONCLUSION
The Examiner erred in rejecting: (1) claims 14 and 24 as failing to
comply with the written description requirement; (2) claims 1-4, 7-11, 13-
15, and 17 as unpatentable over Maruyama and Ross; (3) claims 5, 6, and 12
as unpatentable over Maruyama, Ross, and Reipenhoff; (4) claim 16 as
unpatentable over Maruyama, Ross, and Admitted Prior Art; (5) claims 19,
20, 23-25, 27, 29, 30, 33-36, and 39-47 as unpatentable over Maruyama,
Ross, and Sainio; (6) claims 22, 26, 37, 38, and 48-53 as unpatentable over
Maruyama, Ross, Sainio, and Admitted Prior Art; (7) claims 21, 31, and 54
as unpatentable over Maruyama, Ross, Sainio, Admitted Prior Art, and
Reynolds; (8) claims 22, 26, 37, 38, and 48-53 as unpatentable over
Maruyama, Ross, Sainio, and Admitted Prior Art; (9) claim 28 as
unpatentable over Maruyama, Ross, Sainio, and Dent; (10) claim 32 as
unpatentable over Maruyama, Ross, Sainio, and Seymour; and (11) claims
55-60 as unpatentable over Maruyama, Ross, Sainio, Admitted Prior Art,
Reynolds, and Dent.
The Examiner did not err in rejecting: (1) claim 18 under 35 U.S.C.
112, 2nd paragraph; (2) claims 61-64, 71, and 72 as unpatentable over Sainio
and Ross; claim 65 as unpatentable over Sainio, Ross, and Dent; and (3)
claims 66-70 as unpatentable over Sainio, Ross, Dent, and Admitted Prior
Art.
DECISION
The Examiner’s decision to reject appealed claims 1-17 and 19-60 is
reversed. The Examiner’s decision to reject appealed claims 18 and 61-72 is
affirmed.
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AFFIRMED-IN-PART

rvb

PATENT OWNER

FOLEY AND LARDNER LLP
SUITE 500
3000 K STREET, NW
WASHINGTON, DC 20007

THIRD PARTY REQUESTER

STERNE KESSLER GOLDSTEIN & FOX P.L.L.C.
1100 NEW YORK AVE., N.W.
WASHINGTON, DC 20005