BPAI Should Have Applied Obviousness Analysis to Claims That Were Closely Similar

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By Anandashankar Mazumdar  

June 9 — The Board of Patent Appeals and Interferences has the discretion to find certain claims invalid due to obviousness when similar claims have already been so found, even if with respect to the previous claims, the obviousness argument was not properly raised before the patent examiner, the U.S. Court of Appeals for the Federal Circuit ruled June 9.

Largely affirming obviousness rulings by the BPAI, the court directed the board to be more proactive in applying obviousness arguments sua sponte in a case in which very similar claims had already been found obvious on the same evidence.

Automated Press Monitoring Rivals

QuadTech Inc. of Sussex, Wis., is a manufacturer of automated control systems for printing presses and related equipment. It holds a patent (U.S. Patent No. 6,867,423) related to a “visual inspection system for printing presses.” The technology uses imaging systems to detect whether there are misalignments in color printing and automatically adjusts the press to compensate.

A competitor, Q.I. Press Controls B.V. of Oosterhout, Netherlands, petitioned the Patent and Trademark Office for an inter partes reexamination of the QuadTech patent, arguing that certain claims should have been found obvious in light of prior art, including Patent Nos. 6,605,819, 6,668,114, and 4,887,530.

A patent examiner rejected all 12 claims of the QuadTech patent due to obviousness. QuadTech then amended three of the claims and added 60 new claims, but the examiner subsequently rejected all 72 claims.

On appeal, the Board of Patent Appeals and Interferences affirmed the rejections in part and reversed them in part. Q.I. Press appealed the reversal of the obviousness rejections of claims 1-17 and 19-60, the reversal of the written description rejection of claims 19-60, and the reversal on both grounds of the rejection of claim 18. QuadTech cross-appealed the rejection of claims 61-72 for obviousness and the written description rejection of claim 18.

Mixed Results for Obviousness Rulings

The appeals court first agreed with the board's conclusion that claims 61-72 were obvious in the light of two of the prior art patents. They combined the use of light-emitting diodes to give the monitoring systems sufficient light without extreme heat and configuring them in a circular pattern.

Q.I.'s public statements praising the configuration were relevant to the obviousness analysis, the court said, but they did not overcome this conclusion.

Next, the court affirmed the BPAI's conclusion that the written configuration for claim 18 was insufficient, because it did not indicate the position of the inspection system with respect to the entire press.

Turning to claims 1-60, the court noted the similarity with the other claims found to have been rendered obvious by prior art. The court acknowledged that the board might have refrained from raising sua sponte a new ground for rejection that had not been raised in the record thus far, but the court emphasized that 37 C.F.R. §41.77(b) does give the BPAI discretion to do so.

The court said that “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,” and apply the prior art that had invalidated claims 61-72 to claims 1-17 and 19-60.

The court thus vacated the BPAI's obviousness ruling of those claims and remanded the matter for further proceedings.

The court's opinion was authored by Judge Alan D. Lourie. It was joined by Judge William Curtis Bryson and Judge Todd M. Hughes. Q.I. was represented by Locks Law Firm, Philadelphia. The PTO was represented by the PTO's Office of the Solicitor, Alexandria, Va. QuadTech was represented by Foley & Lardner LLP, Boston.

To contact the reporter on this story: Anandashankar Mazumdar in Washington at amazumdar@bna.com

To contact the editor responsible for this story: Naresh Sritharan at nsritharan@bna.com

Text is available at http://www2.bloomberglaw.com/public/desktop/document/Q_I_Press_Controls_v_Lee_Docket_No_1201630_Fed_Cir_Aug_29_2012_Co.