Examiner and Board Must Be Consistent in Prior Art-Based Rejections of Similarly-Worded Claims

by McDermott Will & Emery
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Q.I. Press Controls, B.V. v. Lee

Addressing the issue of whether the U.S. Patent and Trademark Office’s (PTO) Board of Patent Appeals and Interferences (the Board) erred by rejecting some claims as obvious, but not rejecting other, similarly worded claims using the same rationale, the U.S. Court of Appeals for the Federal Circuit vacated in part, affirmed in part and remanded the Board’s ruling, finding that the PTO should be consistent in making claim rejections and must reject all similarly-worded claims under the same rationale.  Q.I. Press Controls, B.V. v. Lee, Case Nos. 12-1630; -1631 (Fed. Cir., June 9, 2014) (Lourie J.).

Quad/Tech, Inc. owned a patent directed to a visual inspection system for printing presses. The patent discloses an imaging system for printing with large rolls of paper that uses an image sensor system containing an optical sensor to inspect the printed pages. Q.I. Press Controls (Q.I. Press) is a developer of optical measure and control systems, including a product that Quad/Tech alleged to infringe the patent in a related case.  Q.I. Press initiated an inter partes reexamination of the patent, alleging that the claims would have been obvious over the prior art.

The PTO examiner rejected a first group of claims as being obvious in view of two prior art references and rejected a second group of claims on different grounds, notwithstanding that the second group of claims were similarly worded and directed to similar subject matter as the first group.  Quad/Tech appealed to the Board, and the Board affirmed the rejection as to the first group of claims, but allowed the second group of claims.  Q.I. Press then appealed to the Federal Circuit.

The Federal Circuit found that the Board’s rejection of the first group of claims was proper.  The Court rejected Quad/Tech’s argument that the two references which the examiner used to reject the claims could not be combined because the cited references failed to teach a high intensity illumination system.  The Court also rejected Quad/Tech’s argument that Q.I. Press’s statements praising the circular lighting arrangement of its own accused products provided objective evidence of non-obviousness of the patent.  Instead, the Federal Circuit found that a skilled person in the relevant field could have combined the cited references to reach the claimed technique, and the secondary considerations of non-obviousness were not persuasive.

With regard to the second group of claims, the Federal Circuit found the same rationale should apply.  The Court noted that the Board likely failed to make the rejection because the examiner failed to make it himself, and the Board would have had to enter a new ground of rejection in order to apply the references cited against those claims.  As a general rule, the Board is not obligated to do its own research into the prior art and make its own new ground of rejection of claims on appeal.  However, when references and rationale for a rejection are already before the Board, the Board owes an obligation … to the public not to permit inconsistent results when a proper challenge to that inconsistency is made on appeal.  The Federal Circuit found that, by failing to reject the second group of claims, the Board failed to meet this obligation.

DISCLAIMER: Because of the generality of this update, the information provided herein may not be applicable in all situations and should not be acted upon without specific legal advice based on particular situations.

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