Q.I. Press Controls, B v. v. Lee , 752 F.3d 1371 ( 2014 )

United States Court of Appeals
for the Federal Circuit
______________________
Q. I. PRESS CONTROLS, B.V.,
Appellant,
v.
MICHELLE K. LEE, Deputy Director,
United States Patent and Trademark Office,
Appellee,
AND
QUAD/TECH, INC.,
Cross-Appellant.
______________________
2012-1630, -1631
______________________
Appeals from the United States Patent and Trade-
mark Office, Board of Patent Appeals and Interferences in
Reexamination No. 95/000,526.
______________________
Decided: June 9, 2014
______________________
DAVID D. LANGFITT, Locks Law Firm, of Philadelphia,
Pennsylvania, argued for appellant.
SYDNEY O. JOHNSON, JR., Associate Solicitor, United
States Patent and Trademark Office, of Alexandria,
Virginia, argued for appellee. With him on the brief were
2 Q. I. PRESS CONTROLS v. LEE
NATHAN K. KELLEY, Deputy General Counsel for Intellec-
tual Property Law and Solicitor, THOMAS W. KRAUSE,
Special Counsel for IP Litigation, and JOSEPH G. PICCOLO,
Associate Solicitor.
MATTHEW B. LOWRIE, Foley & Lardner LLP, of Boston,
Massachusetts, argued for cross-appellant. With him on
the brief was BRETT P. BELDEN, of Milwaukee, Wisconsin.
Of counsel was JASON PAULS, Quad/Graphics, Inc., of
Sussex, Wisconsin.
______________________
Before LOURIE, BRYSON, and HUGHES, Circuit Judges.
LOURIE, Circuit Judge.
Q.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 both the examiner’s obviousness
rejection of claims 1–17 and 19–60 and written descrip-
tion rejection of claims 14 and 24 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 and claim 18 for
1 The Leahy-Smith America Invents Act amended
the inter partes reexamination provisions. See Leahy-
Smith America Invents Act, Pub. L. No. 112–29, § 6, 125
Stat. 284, 299–305 (2011) (“AIA”). Those amendments do
not apply here because the request for inter partes reex-
amination in this case was filed before the date of enact-
ment, September 16, 2011. Id. We thus express no
opinion on the applicability of the AIA provisions to the
current case.
Q. I. PRESS CONTROLS v. LEE 3
failing to meet the requirements of § 112, ¶1. 2 Because
the Board erred in failing to consider the same obvious-
ness rejection of claims 61–72 in connection with claims
1–17 and 19–60, but did not otherwise err, we vacate in
part, affirm in part, and remand.
BACKGROUND
Quad/Tech owns the ’423 patent, which relates to a
visual inspection system for printing presses. ’423 patent
col. 2 ll. 13–15. The ’423 patent discloses an imaging
system for web printing (i.e., printing with large rolls of
paper) that uses an image sensor system containing an
optical sensor to inspect printed pages (the “substrate”)
for defects, viz., misalignments or poor color, in order to
change the printing process to correct those errors. Id.
col. 5 l. 16–col. 7 l. 56. A circular configuration of light-
emitting diodes (“LEDs”) surrounds the image sensor and
illuminates the substrate. Id. The circular configuration
of LEDs is depicted in figure 3, reproduced below:
2 Paragraph 1 of 35 U.S.C. § 112 was replaced with
newly designated § 112(a) by § 4(c) of the AIA, and AIA
§ 4(e) makes those changes applicable “to any patent
application that is filed on or after” September 16,
2012. Because the application resulting in the patent at
issue was filed before that date, we will refer to the pre-
AIA version of § 112.
4 Q. I. PRESS CONTROLS v. LEE
Id. fig. 3. 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 print-
ing press, said visual inspection system compris-
ing:
a CMOS image recording device configured to
record images printed on the substrate,
a processing unit coupled to the recording de-
vice, wherein the processing unit is config-
ured to generate an output, and
an illumination system of the non-strobe, non-
incandescent type, wherein said illumina-
tion system includes a plurality of LEDs
wherein said plurality of LEDs are in a cir-
cular configuration.
Id. col. 9 ll. 45–56. Claims 14 and 24, also on appeal, are
similar to claim 1 but require “a sensor, wherein the
LEDs are disposed between the sensor and the substrate
of the printing press.” E.g., Response to Office Action and
Q. I. PRESS CONTROLS v. LEE 5
Amendment, No. 95/000,526, at 8, 9 (Apr. 2, 2010) (“Claim
Amendments”). Claim 18 is also similar to claim 1, add-
ing the requirement that “the substrate of the printing
press is unsupported at the point where the substrate is
configured to be illuminated by the illumination ar-
rangement.” Id. at 8.
Claim 61 is representative of claims 61–72 and reads
as follows:
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 compris-
ing:
an image recording device configured to acquire
a two-dimensional image from a substrate
on a printing press, wherein the image re-
cording device comprises at least a sensor,
wherein the sensor is in optical communica-
tion 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 record-
ing device, wherein the illumination system
is adapted to illuminate the substrate of the
printing press; and
a processing circuit coupled to the image re-
cording device and configured to process the
image to control the printing press.
Id. at 13–14.
Q.I. Press, a developer of optical measure and control
systems including a product that Quad/Tech alleged to
infringe the ’423 patent in a related case, initiated an
6 Q. I. PRESS CONTROLS v. LEE
inter partes reexamination of the ’423 patent, alleging
that the claims would have been obvious over various
prior art references. The references cited by both parties
in the reexamination included U.S. Patent 6,605,819 of
Ross, U.S. Patent 6,668,144 of Maruyama, and U.S.
Patent 4,887,530 of Sainio.
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. fig.
1a, col. 2 ll. 13–26, col. 6 ll. 35–49. The recorded data are
compared to data of genuine bills lit under those colors to
determine source and denomination. Id. col. 2 ll. 27–34,
col. 6 l. 58–col. 7 l. 22. The circular LED lighting system
is depicted in Figure 1a of the Ross patent, reproduced
below:
Ross fig. 1a.
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 proper-
Q. I. PRESS CONTROLS v. LEE 7
ties of the sheet, such as thickness. Id. fig. 6A, col. 6 ll.
46–59. That information is then used to adjust the print-
ing process based on the thickness of the sheet. Id. col. 7
ll. 24–32.
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. col. 3 l.
67–col. 4 l. 42. The system then analyzes the deviations
and generates signals to adjust the printing process and
account for those deviations. Id. col. 6 ll. 38–44.
The examiner initially rejected all twelve of the origi-
nal claims of the ’423 patent as obvious over various
combinations of prior art. Office Action, No. 95/000,526
(Feb. 5, 2010). Quad/Tech responded by amending claims
5, 9, and 12 and adding sixty new claims, claims 13–72, to
the ’423 patent. Claim Amendments at 4–15.
The examiner then closed prosecution and made a fi-
nal rejection of all 72 claims. Action Closing Prosecution,
No. 95/000,526 (June 24, 2010). She rejected claims 14
and 24 as failing to meet the written description require-
ment of 35 U.S.C. § 112, ¶1, on the ground that the claim
requirement of “a sensor, wherein the LEDs are disposed
between the sensor and the substrate of the printing
press” lacked support in the original patent. Id. at 7. The
examiner also rejected claim 18 under § 112, ¶1, on the
ground that the claim contained a negative limitation
requiring the “substrate of the press [to be] unsupported
at the [point of illumination],” which lacked support in the
original patent. Id. at 8.
8 Q. I. PRESS CONTROLS v. LEE
The examiner additionally rejected claims 1–4, 7–15,
17, and 18 under 35 U.S.C. § 103(a) 3 for obviousness over
Maruyama in view of Ross. Id. at 9. Specifically, she
found that Maruyama disclosed a visual inspection sys-
tem for a printing press and Ross disclosed a circular LED
configuration. Id. at 9–14. The remaining claims were
rejected under § 103(a) as unpatentable over various
combinations of prior art: (i) claims 5, 6, and 12 were
rejected over Maruyama in view of Ross, further in view
of U.S. Patent 6,691,620 of Riepenhoff; (ii) claim 16 was
rejected over Maruyama in view of Ross, further in view
of Admitted Prior Art; (iii) claims 19, 20, 23–25, 27, 29,
30, 33–36, and 39–47 were rejected over Maruyama in
view of Ross, further in view of Sainio; (iv) claims 21, 31,
and 54 were rejected over Maruyama in view of Ross,
further in view of Sainio, Admitted Prior Art, and U.S.
Patent 4,736,446 of Reynolds; (v) claims 22, 26, 37, 38,
and 48–53 were rejected over Maruyama in view of Ross,
further in view of Sainio and Admitted Prior Art; (vi)
claim 28 was rejected over Maruyama in view of Ross,
further in view of Sainio and U.S. Patent 5,884,073 of
Dent; (vii) claim 32 was rejected over Maruyama in view
of Ross, further in view of Sainio and U.S. Patent
3 On the date applicable to this case, the statute
provided that:
(a) A patent may not be obtained . . . if the differ-
ences between the subject matter sought to be pa-
tented and the prior art are such that the subject
matter as a whole would have been obvious at the
time the invention was made to a person having
ordinary skill . . . .
35 U.S.C. § 103(a) (2006). That provision has since been
amended. See AIA § 3(c), 125 Stat. 284, 287–88 (2011).
However, because the application that led to the ’423
patent was filed before March 16, 2013, the pre-AIA
§ 103(a) applies. See AIA, 125 Stat. at 293.
Q. I. PRESS CONTROLS v. LEE 9
5,967,050 of Seymour; and (viii) claims 55–60 were reject-
ed over Maruyama in view of Ross, further in view of
Sainio, Admitted Prior Art, Dent, and Reynolds. Id. at
24–51. Thus, for the obviousness rejections of claims 1–
60, the examiner relied on Maruyama as the primary
reference disclosing the limitations of a visual inspection
system configured to work with a printing press, as re-
quired by the preambles of the respective claims. See,
e.g., id. at 9 (“Maruyama discloses a visual inspection
system . . . configured to be in optical communication with
a substrate/sheet (of paper) of a printing press.”).
The examiner also rejected claims 61–64, 71, and 72
under § 103(a) as unpatentable over Sainio in view of
Ross. Id. at 51. The examiner relied on Sainio for its
disclosure of the visual inspection system configured to
work with a printing press and on Ross for its disclosure
of the circular LED configuration. Id. at 51–56. Addi-
tionally, the examiner rejected claim 65 as unpatentable
over Sainio in view of Ross, further in view of Dent, and
rejected claims 66–70 over Sainio in view of Ross, further
in view of Dent and Admitted Prior Art. Id. at 56–57.
Thus, for the obviousness rejections of claims 61–72, the
examiner relied on Sainio as the primary reference dis-
closing the visual inspection system in optical communi-
cation with the substrate of a printing press, required by
the claim preambles, as well as the limitation to acquire a
two-dimensional image from a printing press substrate,
and relied on Ross for the circular LED configuration. Id.
at 51–57. Quad/Tech appealed the rejections to the
Board.
On appeal, the Board affirmed in part and reversed in
part the examiner’s rejections. Specifically, the Board
reversed the rejections of claims 14 and 24 under § 112,
¶1, finding that the disclosure of an image recording
device in the written description of the ’423 patent and its
representations in figure 2 and 3 were sufficient to sup-
port the claim limitation of a sensor positioned between a
10 Q. I. PRESS CONTROLS v. LEE
substrate and an image recording device. Board Decision
at 5. The Board further reversed the obviousness rejec-
tion of claims 1–17 and 19–60, finding that neither Ross
nor Maruyama suggested using a visual inspection sys-
tem with LED lighting in communication with a printing
press. Id. at 7–8. The Board reversed those rejections
because it found that neither Maruyama nor Ross dis-
closed or suggested a printing press, finding instead that
Maruyama disclosed a visual inspection system for a
copier or laser printer and that Ross disclosed a system
for “media recognition, validation and screening.” Id. at
7.
The Board did affirm the examiner’s rejection of
claims 61–72, finding that they would have been obvious
over the printing press of Sainio and the circular configu-
ration of LEDs of Ross. Id. at 14. The Board found that
Sainio disclosed a printing press that included an illumi-
nation system and that it would have been obvious to
incorporate the illumination system of Ross with Sainio.
Id. at 8–11. The Board also affirmed the rejection of
claim 18 under 35 U.S.C. § 112, ¶2, finding that the
figures of the ’423 patent do not disclose a substrate that
is “unsupported at the point [of illumination],” rendering
the claim invalid for lack of adequate written description.
Id. at 6.
Q.I. Press appealed to this court the Board’s reversal
of the examiner’s obviousness rejection of claims 1–17 and
19–60 and the written description rejection of claims 14
and 24; Quad/Tech cross-appealed the Board’s affirmance
of the examiner’s rejection of claims 61–72 for obviousness
and the written description rejection of claim 18. We have
jurisdiction pursuant to 28 U.S.C. § 1295(a)(4)(A).
Q. I. PRESS CONTROLS v. LEE 11
DISCUSSION
I. Standard of Review
We review the Board’s legal conclusions de novo, In re
Elsner, 381 F.3d 1125, 1127 (Fed. Cir. 2004), and the
Board’s factual findings underlying those determinations
for substantial evidence, In re Gartside, 203 F.3d 1305,
1316 (Fed. Cir. 2000). A finding is supported by substan-
tial evidence if a reasonable mind might accept the evi-
dence to support the finding. Consol. Edison Co. v.
NLRB, 305 U.S. 197, 229 (1938). In PTO reexaminations,
“‘the standard of proof—a preponderance of the evi-
dence—is substantially lower than in a civil case’ and
there is no presumption of validity in reexamination
proceedings.” In re Baxter Int’l, Inc., 678 F.3d 1357, 1364
(Fed. Cir. 2012) (quoting In re Swanson, 540 F.3d 1368,
1377 (Fed. Cir. 2008)).
II. Obviousness of Claims 61–72
We first address the cross-appeal, as it forms the
backdrop for our view of the principal appeal. 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. Quad/Tech further argues
that Ross and Sainio cannot be combined because the
circular lighting configuration of Ross does not teach a
high intensity illumination system, but rather a way of
shining individual pairs of lights. Finally, Quad/Tech
argues that Q.I. Press’s statements praising the circular
lighting arrangement of its own accused products provide
objective evidence of nonobviousness of the ’423 patent.
Q.I. Press responds that at the time of the invention
of the ’423 patent, LEDs were well known by those of skill
in the art to provide efficient illumination with less heat
than conventional lighting solutions. The Director re-
sponds that the combination of Sainio and Ross would
have been obvious to one of skill in the art. The Director
12 Q. I. PRESS CONTROLS v. LEE
contends that Sainio teaches a printing press, that Ross
teaches a circular LED configuration, and that one of skill
in the art would have combined Ross with Sainio to use
multiple LEDs in the circular pattern for greater illumi-
nation.
We agree with Q.I. Press and the Director that com-
bining Ross and Sainio would have been obvious to one
having skill in the art at the time of the invention. Obvi-
ousness 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 accord-
ing 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.
Sainio 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
Q. I. PRESS CONTROLS v. LEE 13
would obtain the predictable result of a greater degree of
illumination. The Board thus did not err in concluding
that claims 61–72 would have been obvious over Sainio in
view of Ross.
Moreover, although the invention in Ross uses the cir-
cular 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 illumina-
tion 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.
Further, Q.I. Press’s marketing statements praising
the circular configuration of the LED illumination, intro-
duced 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 configu-
ration 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 fea-
tures” of that product. Joint Appendix (“J.A.”) 863.
Although these objective indicia of non-obviousness are
relevant to, and must be factored into our analysis, that
evidence does not alter the conclusion that, upon consid-
eration of all relevant evidence, claims 61–72 of the ’423
patent were invalid as obvious over Sainio in view of Ross.
The Board thus did not err in reaching that conclusion.
III. Written Description of Claim 18
Also in the cross-appeal, Quad/Tech argues that the
Board erred in concluding that claim 18 of the ’423 patent
was invalid for inadequate written description because, it
asserts, the figures of the patent depict areas where the
substrate is physically unsupported by rollers. Specifical-
ly, Quad/Tech points to figures 1 and 2 of the ’423 patent
14 Q. I. PRESS CONTROLS v. LEE
to depict where the substrate is physically unsupported at
the point of illumination, as required by claim 18.
The Director responds that those figures do not depict
a substrate that is physically unsupported at the point of
illumination. The Director contends that figure 1, depict-
ing the printing press, does not show where the visual
inspection system is, and that figure 2 is exemplary,
showing the visual inspection system but not the sur-
rounding printing press.
We agree with the Director that the figures of the ’423
patent do not show the substrate unsupported at the
point of illumination as required by claim 18. Whether a
claimed invention is supported by an adequate written
description is a question of fact, Ariad Pharm., Inc. v. Eli
Lilly & Co., 598 F.3d 1336, 1351 (Fed. Cir. 2010) (en
banc), which we review for substantial evidence, Shu-Hui
Chen v. Bouchard, 347 F.3d 1299, 1304–05 (Fed. Cir.
2003). The written description is a statutory requirement
set forth in 35 U.S.C. § 112. The test for written descrip-
tion is that it “must clearly allow persons of ordinary skill
in the art to recognize that [the inventor] invented what is
claimed.” Ariad, 598 F.3d at 1351 (citation and quota-
tions omitted). The disclosure must “convey[] to those
skilled in the art that the inventor had possession of the
claimed subject matter as of the filing date.” Id.As the Board found, the written description of the ’423
patent does not show a substrate unsupported at the
point of illumination. Board Decision at 6. Figure 1,
below, shows an unsupported substrate (12), but does not
indicate where in the figure the illumination system
would be. Figure 2, on the other hand, shows the illumi-
nation system (66) and the substrate (12) but does not
depict any of the printing press hardware.
Q. I. PRESS CONTROLS v. LEE 15
’423 patent fig. 1.
Id. fig. 2.
Although the substrate in figure 2 appears to be un-
supported at the point of illumination, the Board found
that the depiction of the substrate was inadequate. In
figure 2, the depicted substrate is “floating,” without any
reference or additional illustration of the roller hardware
of the printing press. Without this information, the figure
does not “clearly allow persons of ordinary skill in the art
to recognize that [the inventor] invented what is claimed.”
Ariad, 598 F.3d at 1351 (citation and quotations omitted).
16 Q. I. PRESS CONTROLS v. LEE
The ’423 patent also recognizes that figure 2 does not
depict the surrounding printing press hardware. The
written description relevant to figure 2 describes it as “a
block diagram of a visual inspection system,” ’423 patent
col. 2 ll. 37–38 (emphasis added), not as a depiction of the
printing press invention as a whole. Substantial evidence
thus supports the Board’s conclusion that claim 18 is
invalid due to an inadequate written description because
the written description does not disclose a physically
unsupported substrate at the point of illumination.
IV. Obviousness of Claims 1–60
In the principal appeal, Q.I. Press argues that the
Board erred in concluding that claims 1–60 would not
have been obvious over Maruyama in view of Ross. 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. Q.I. Press also argues
that the Board erred in reversing the rejection of claims
13–60 because those claims, added during the reexamina-
tion, improperly expanded the scope of the ’423 patent in
violation of 35 U.S.C. § 305.
Quad/Tech responds that the Board was correct in
concluding that Maruyama and Ross would not have
rendered claims 1–60 obvious. Quad/Tech contends that
the printing press is a limitation of claims 1–60 and that
although it appears in the preamble of some of the inde-
pendent claims, later limitations require the preamble
printing press disclosure to provide antecedent basis.
Quad/Tech thus asserts that the combination of Maruya-
ma and Ross would not have rendered the claims obvious
because Maruyama does not disclose a printing press.
Quad/Tech additionally argues that Q.I. Press has waived
the argument that claims 13–60 expanded the scope of the
Q. I. PRESS CONTROLS v. LEE 17
’423 patent because Q.I. Press failed to present it to the
Board. The Director also asserts that the combination of
Maruyama and Ross would not have rendered claims 1–
60 obvious because it is undisputed that neither
Maruyama nor Ross discloses a printing press.
Concerning the argument that the Board erred in re-
versing the rejection of claims 13–60 because those claims
improperly expand the scope of the ’423 patent in viola-
tion of 35 U.S.C. § 305, we agree with Quad/Tech that the
argument was not presented before the Board and is thus
waived. See In re Baxter Int’l, Inc., 678 F.3d 1357, 1362
(Fed. Cir. 2012) (“Absent exceptional circumstances . . .
we generally do not consider arguments that the appli-
cant failed to present to the Board.” (citing In re Watts,
354 F.3d 1362, 1367–68 (Fed. Cir. 2004)).
Regarding 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 sub-
strate,” ’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.
18 Q. I. PRESS CONTROLS v. LEE
The 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 config-
ured 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.
We 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.’”
(quoting In re Leithem, 661 F.3d 1316, 1319 (Fed. Cir.
2011)); see also Leithem, 661 F.3d at 1319 (stating that
even “reliance on the same statutory basis and the same
prior art references, alone, is insufficient to avoid making
a new ground of rejection when the Board relies 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
Q. I. PRESS CONTROLS v. LEE 19
(citing In re Stepan Co., 660 F.3d 1341, 1344 (Fed. Cir.
2011); 37 C.F.R. § 41.77(b)); see also Stepan, 660 F.3d at
1343 (“[I]f the appellant has not had a full and fair oppor-
tunity to litigate the Board’s actual basis of rejection, the
administrative validity proceedings before the [PTO]
should be allowed to continue.” (citing In re Kumar, 418
F.3d 1361, 1367–68 (Fed. Cir. 2005)). If a new ground of
rejection is included in the opinion, the patentee then has
the option to either reopen prosecution before the examin-
er or request rehearing. 37 C.F.R. § 41.77(b).
Here, when all these 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. The 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 con-
sidering the combination of Sainio and Ross as a new
ground for rejection of claims 1–60. Accordingly, we
vacate the Board’s decision to the extent that it holds that
claims 1–60 would not have been obvious and remand
that portion of the case for further proceedings consistent
with this opinion.
20 Q. I. PRESS CONTROLS v. LEE
V. Written Description of Claims 14 and 24
Q.I. Press argues in the principal appeal that the
Board erred in reversing the written description rejection
of claims 14 and 24 because the written description of the
’423 patent does not disclose a “sensor” that is above the
LEDs and the printing press substrate. Q.I. Press con-
tends that the Board relied on the image recording device
depicted in figure 3 for the sensor required in claims 14
and 24, but that the written description provides no
guidance to show where in the image recording device
that sensor is housed.
Quad/Tech and the Director respond that the position
of the LEDs is shown in figure 2, which shows the illumi-
nation system (LEDs) disposed between the image record-
ing device (sensor) and the substrate. They further
contend that figure 3 shows the LEDs arranged around
the lens of the camera and above the housing. Quad/Tech
and the Director also respond that a person of ordinary
skill would have understood the sensor to be in the hous-
ing and thus that the LEDs would be between the sub-
strate and the sensor.
We agree with Quad/Tech and the Director that
claims 14 and 24 are not invalid for inadequate written
description because the figures of the ’423 patent show
the illumination system disposed between the image
recording device and the substrate. First, regarding Q.I.
Press’s argument that the ’423 patent does not disclose a
“sensor,” we agree with the Board that the image record-
ing device would include a sensor. See Board Decision at
5 (“[T]he Specification discloses an . . . ‘image recording
device’ (i.e., ‘sensor’) (e.g., Fig. 2, element 64).”). An image
recording device necessarily includes a sensor to capture
the image, and that sensor is contained within the record-
ing device.
Additionally, the figures of the ’423 patent clearly
show the illumination system disposed between the
Q. I. PRESS CONTROLS v. LEE 21
sensor and the substrate. Figure 2 of the ’423 patent,
reproduced below, depicts the illumination system (66)
disposed between the image recording device (64) and the
substrate (12), supporting the requirements of claims 14
and 24.
’423 patent fig. 2.
Figure 3 of the ’423 patent, reproduced below, depicts
the LED light array (67) as configured above the image
recording device (64) in the direction of the image being
recorded, here the substrate. Although the substrate is
not shown in that figure, the lens of the image recording
device necessarily points towards the substrate, and
clearly shows that the LEDs are between the object being
recorded (the substrate) and the image recording device
(64).
22 Q. I. PRESS CONTROLS v. LEE
’423 patent fig. 3. The Board’s conclusion that claims 14
and 24 are not invalid for inadequate written description
is thus supported by substantial evidence.
CONCLUSION
For the foregoing reasons, the decision of the Board
holding claims 61–72 invalid under § 103, claim 18 invalid
for failing to meet the written description requirement
under § 112, and claims 14 and 24 to have met the writ-
ten description requirement under § 112 is affirmed, and
the decision of the Board upholding the validity of claims
1–60 under § 103 is vacated and remanded.
AFFIRMED IN PART, VACATED IN PART, AND
REMANDED