Q.I. Press Controls v. Lee: Board Must Issue New Grounds of Rejection to Avoid Inconsistencies

Category: Administrative Law 
By: Jesus Hernandez, Blog Editor/Contributor
TitleQ.I. Press Controls, B.V. v. Lee, No. 2012-1630, -1631 (Fed. Cir. June 9, 2014).
[1: Obviousness Rejection of Claims 61-72] Quad/Tech argues that the Board erred in rejecting claims 61–72 for obviousness over Ross and Sainio by using hindsight bias to combine the two references […] [and] that Ross and Sainio cannot be combined because the circular lighting configuration of Ross does not teach a high intensity illumination system […]
Q.I. Press Controls, B.V. at *11.
[2: Contradictory 103 Rejection Regarding Claims 1-60] Q.I. Press asserts that the Board’s decision is inherently contradictory, finding that claims 1–60 would not have been obvious because Maruyama and Ross do not disclose a printing press, but also finding that the similar claims 61–72 would have been obvious over a combination of the printing press in Sainio and Ross.
Id. at *16.
[1: Obviousness Rejection of Claims 61-72] [C]ombining Ross and Sainio would have been obvious to one having skill in the art at the time of the invention [because the claim language at issue is broad and the asserted combination would give the predictable result of greater degree of illumination].
Id. at *12 (text added).
[2: Contradictory 103 Rejections] [W]hen all [the] references were before the Board, and this court, an obligation is owed to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal. The Board should have observed the similarities between the claims, noted those similarities between the claims and the references before the Board on appeal, analyzed whether the combination of Sainio and Ross would have rendered claims 1–60 obvious, and if so, issued a new ground of rejection.
Id. at *19.
Procedural HistoryQ.I. Press Controls, B.V. (“Q.I. Press”) appeals from the decision of the United States Patent and Trademark Office (“PTO”) Board of Patent Appeals and Interferences (“the Board”) reversing […] the examiner’s obviousness rejection of claims 1–17 and 19–60 […] of U.S. Patent 6,867,423 (the “’423 patent”) in an inter partes reexamination. See Q.I. Press Controls, B.V. v. Quad/Tech, Inc., No. 2012- 002457 (B.P.A.I. May 11, 2012) (“Board Decision”).1 Quad/Tech, Inc. (“Quad/Tech”) cross-appeals from the Board’s decision affirming the examiner’s rejection of the ’423 patent’s claims 61–72 as obvious […].
Q.I. Press Controls, B.V. at *2-3.
Legal Reasoning (Lourie, Bryson, Hughes)
Claims at Issue
Claim 1 is representative of claims 1–60 and 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.

Q.I. Press Controls, B.V. at *4.
61. . . . A visual inspection system configured to be in optical communication with a substrate of a printing press, wherein the substrate has a print- ed image, said visual inspection system comprising:

an image recording device configured to acquire a two-dimensional image from a substrate on a printing press, wherein the image recording device comprises at least a sensor, wherein the sensor is in optical communication with the substrate along an optical communication path; and

an illumination system comprising a plurality of LEDs that are disposed in a configuration surrounding the optical communication path between the substrate and the image recording device,

wherein the illumination system is adapted to illuminate the substrate of the printing press; and

a processing circuit coupled to the image recording device and configured to process the image to control the printing press.

Id. at *5.
Prior Art
Ross discloses a circular LED lighting system around an optical sensor for visual inspection of bank notes within an automated teller machine (“ATM”). Ross col. 1 ll. 5–17. Ross describes that the LEDs are lit in four separate pairs of different colored lights and the resulting diffuse reflection is recorded by the optical sensor.
Id. at *6.
Maruyama discloses an optical sensor to visually ana- lyze and gather data from a sheet lit by an LED lighting system in a photocopier or laser printer. E.g., Maruyama col. 4 ll. 30–39. Maruyama discloses that the light from the LED system is reflected at an angle to detect properties of the sheet, such as thickness. Id. fig. 6A, col. 6 ll. 46–59.
Id. at *6-7.
Sainio discloses a system comprising an optical image scanner in a printing press to detect errors in the printing process. Sainio, at [57]. Sainio describes that the optical image scanner, using a high intensity light, scans printed marks to detect deviations within the marks.
Id. at *7.
1: Obviousness Rejection of Claims 61-72
Legal Standard: ObviousnessObviousness is a question of law, based on underlying factual findings. Graham v. John Deere Co., 383 U.S. 1, 17–18 (1966); Elsner, 381 F.3d at 1127. A claim is invalid for obviousness if, to one of ordinary skill in the pertinent art, “the differences between the subject matter sought to be patented and the prior art are such that the subject matter as a whole would have been obvious at the time the invention was made . . . .” 35 U.S.C. § 103(a) (2006); see also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406– 07 (2007). “The combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results.” KSR, 550 U.S. at 416. In assessing this question, assessment of proffered evidence of non-obviousness must be part of the inquiry, even in the reexamination context. Leo Pharm. Prods., Ltd. v. Rea, 726 F.3d 1346, 1357–58 (Fed. Cir. 2013). That is the case here.
Q.I. Press Controls, B.V. at *12.
Predictable Results from CombinationSainio teaches a printing press incorporating a single high intensity illumination system. That illumination system is used to detect misalignments in the printing press and to adjust the system accordingly. Ross discloses a circular LED lighting configuration consisting of a plurality of LEDs surrounding an optical sensor. As the Board correctly found, it would have been obvious for one of skill in the art, in seeking alternatives to a single high intensity light, to increase the number of light sources and utilize LEDs, teachings found in Ross. Additionally, 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 *12-13.
Broad Scope of ClaimsMoreover, although the invention in Ross uses the circular configuration to illuminate two lights at a time, claims 61–72 of the ’423 patent only require a “plurality of LEDs . . . disposed in a configuration surrounding the optical communication path . . . .” Claim Amendments at 13–15. Thus, the claims do not require that the illumination occur at the same time or that a specific sequence of lights be lit, but only that there is a plurality of lights in a circular configuration, which Ross discloses.
Id. at *13.
Objective Indicia of Nonobviousness not persuasiveFurther, Q.I. Press’s marketing statements praising the circular configuration of the LED illumination, introduced by Quad/Tech as evidence of industry praise, do not change our obviousness conclusion. Q.I. Press’s brochure does include statements about the circular LED configuration being “state-of-the-art LED lighting technology” with a “higher quality of lumen,” and that the “ring of LED lighting” was one of the “most striking design features” of that product. […]
Id. at *13.
2: Contradictory 103 Rejections
Independent Claim 1 and 61 Substantially similarRegarding the obviousness of claims 1–60, however, those claims differ only slightly from claims 61–72, the rejection of which we have above affirmed. Taking claim 1 and claim 61 as representative, both claims begin with a nearly identical preamble and include an image recording device, a processing unit, and an illumination system. Compare Claim Amendments at 13–14 with ’423 patent col. 9 ll. 45–56. The only meaningful differences between the claims are: (i) the image recording device of claim 61 acquires an image “from a substrate on a printing press,” Claim Amendments at 14, whereas the image recording device of claim 1 records “images printed on the substrate,” ’423 patent col. 9 ll. 48–50; (ii) the illumination system of claim 61 surrounds the optical image recording device and is adapted to illuminate the printing press substrate, Claim Amendments at 14, whereas the illumi- nation system of claim 1 is in a circular configuration, ’423 patent col. 9 ll. 53–56; and (iii) the processing unit of claim 61 is configured to process the recorded image, Claim Amendments at 14, whereas the processing unit of claim 1 is configured to generate an output, ’423 patent col. 9 ll. 50–52.
Q.I. Press Controls, B.V. at *17.
Similarity of Rejections by ExaminerThe examiner rejected claims 1–60 over combinations of Maruyama and Ross, finding that Maruyama disclosed a visual inspection system for a printing press and that Ross disclosed a circular LED illumination configuration. The examiner rejected claims 61–72 over combinations of Sainio and Ross for similar reasons; she relied on Sainio for its disclosure of the visual inspection system configured to work with a printing press and on Ross for the circular LED configuration. Given the minor differences in the claims themselves and similarities in the cited prior art, it seems apparent that the combination of Sainio and Ross discloses many of the elements of claims 1–60.
Id. at *18.
New Grounds of Rejection at the Board, GenerallyWe are cognizant of the fact that the Board perhaps did not sua sponte reject claims 1–60 for obviousness over Sainio in view of Ross because that rejection would have constituted a new ground for rejection on appeal. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed. Cir. 2013) (“The Board may not ‘rel[y] on new facts and rationales not previously raised to the applicant by the examiner.’” […] However, the Board has the discretion to issue a new ground of rejection if it has knowledge of one. 37 C.F.R. § 41.77(b) (“[S]hould the Board have knowledge of any grounds not raised in the appeal for rejecting any pending claim, it may include in its opinion a statement to that effect with its reasons for so holding, which statement shall constitute a new ground of rejection of the claim.”). In those instances, the “Board must designate its decision a new ground of rejection and provide the appellant with an opportunity to respond.” Rambus, 731 F.3d at 1256 […]. If a new ground of rejection is included in the opinion, the patentee then has the option to either reopen prosecution before the examiner or request rehearing. 37 C.F.R. § 41.77(b).
Id. at *18 (some citations omitted).
Must issue New Grounds of RejectionThe combination of Sainio and Ross was before the Board on appeal because those references were cited by the examiner to invalidate claims 61–72. And, given the minor differences between the claims, the Board “[had] knowledge of . . . grounds not raised in the appeal for rejecting [claims 1–60].” Id. We do not hold that the Board should always apply references that are before it affecting some claims to every other claim on appeal, but we do find that in this instance, in which nearly identical claims were found both valid and invalid due to similar combinations of prior art resulting in a Board opinion that was seemingly inconsistent, the Board erred by not considering the combination of Sainio and Ross as a new ground for rejection of claims 1–60.
Id. at *19.
For the foregoing reasons, the decision of the Board holding claims 61–72 invalid under § 103, […], and the decision of the Board upholding the validity of claims 1–60 under § 103 is vacated and remanded.
Q.I. Press Controls, B.V. at *22.
Editor Note
This case also discussed the Written Description requirement for various claims. For further reading, click here.
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