Docket Nos. 2012-1630, -1631
LOURIE, BRYSON, HUGHES
June 9, 2014
Brief Summary: Certain claims were held obvious by the examiner and affirmed by the Board by a combination of references, while others were not. The opinion explains that the Board should have issued a new ground of rejection applying that combination of references to the other claims, and the patentee given a chance to respond. The written description decisions were affirmed.
Summary: Q.I. Press Controls appealed from PTO Board decision reversing the examiner’s obviousness rejections of claims 1-17 and 19-60 and written description rejections of claims 14 and 24 of US 6,867,423 relating to visual inspection systems for printing presses (in an inter partes reexamination). Quad/Tech cross-appealed the Board’s affirmance of the obviousness rejections of claims 61-72 and the written description of claim 18. The systems function using an image sensor including optical sensor and begin surrounded by a circular configuration of light-emitting diodes to inspect printed pages for defects (e.g., misalignments or poor color) so the process can be changed to correct the errors. The obviousness rejection of claims 61-72 was considered first in the opinion. The FC panel agreed with the examiner and the Board that the claims were obvious based on KSR’s instruction that “[t]he combination of familiar elements according to known methods is likely to be obvious when it does no more than yield predictable results” and Q.I. Press’ evidence such as industry praise was not convincing. The FC panel also agreed with the written description rejection of claim 18 because the figures of the ‘423 patent did not show how pages are unsupported at the point of illumination. It also concluded that the Board should have applied the same combination of references to claims 1-17 and 19-60 as a new rejection, to which Quad/Tech could have reopened prosecution or requested a rehearing (explaining that while “[t]he Board may not ‘rel[y] on new facts and rationales not previously raised to the applicant by the examiner” (In re Leithem, FC 2011), it “has the discretion to issue a new rejection if it has knowledge of one” (37 CFR § 41.77(b)). And the panel agreed with the Board that claims 14 and 24 were not invalid for lack of written description. Thus, the decision upholding the validity of claims 1-60 was vacated and remanded, but the other holdings were affirmed.