Ex Parte 6,672,187 et al

Board of Patent Appeals and Interferences

Feb 16, 2012

95001354 (B.P.A.I. Feb. 16, 2012)

UNITED STATES PATENT AND TRADEMARK OFFICE
UNITED STATES DEPARTMENT OF COMMERCE
United States Patent and Trademark Office
Address: COMMISSIONER FOR PATENTS
P.O. Box 1450
Alexandria, Virginia 22313-1450
www.uspto.gov
APPLICATION NO. FILING DATE FIRST NAMED INVENTOR ATTORNEY DOCKET NO. CONFIRMATION NO.
95/001,354 05/14/2010 6,672,187 1286.011 9880
7590 02/16/2012
JANSSON, SHUPE & MUNGER, LTD
245 MAIN STREET
RACINE, WI 53403
EXAMINER
DAWSON, GLENN K
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
02/16/2012 PAPER
Please find below and/or attached an Office communication concerning this application or proceeding.
The time period for reply, if any, is set in the attached communication.
PTOL-90A (Rev. 04/07)

UNITED STATES PATENT AND TRADEMARK OFFICE
____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
____________
ZUND SYSTEMTECHNIK AG & ZUND AMERICA, INC.
Requester

v.

Patent of MIKKELSEN GRAPHIC ENGINEERING, INC.
Patent Owner
____________________

Appeal 2011-013537
Reexamination Control 95/001,354
Patent US 6,672,187
Technology Center 3900

____________

Before RICHARD M. LEBOVITZ, DANIEL SONG, and
JOSIAH C. COCKS, Administrative Patent Judges.

LEBOVITZ, Administrative Patent Judge.

DECISION ON APPEAL
This is a decision on appeal by the Third Party Requester from the
Patent Examiner’s confirmation of claims 1, 3-8, 13, and 17-22 in an inter
partes reexamination of U.S. Patent No. 6,672,187. The Board’s jurisdiction
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for this appeal is under 35 U.S.C. §§ 6(b), 134, and 315. We affirm-in-part
and reverse-in-part.
STATEMENT OF THE CASE
The patent in dispute in this appeal is U.S. Patent No. 6,672,187 B2
(hereinafter, “the ‘187 patent”), which issued January 6, 2004. The named
inventors are Peter Alsten, Geo Anderson, and David G. Jansson.
A request for inter partes reexamination of the ‘187 patent was filed
on May 14, 2010 under 35 U.S.C. §§ 311-318 and 37 C.F.R. §§ 1.902-1.997
by Zund Systemtechnik AG and Zund America Inc. (Request for Inter Partes
Reexamination 1-2) (hereinafter, the “Requester”).
The assignee and current owner of the ‘187 patent, Mikkelsen Graphic
Engineering, Inc. (hereinafter, the “Patent Owner” or “MGE”) has filed suit
against the Requester for infringement of the ‘187 patent in the United States
District Court for the Eastern District of Wisconsin, captioned Mikkelsen
Graphic Engineering, Inc v. Zund America Inc. et al., Civil Action No.
2:07-cv-00391 (Appellant’s (Requester) Appeal Brief (“App. Br.”) 3. The
litigation was said to be pending at the time the appeal brief was filed (id.)
The invention in the ‘187 patent is described as “an improved method
and apparatus for precision cutting of graphics areas from sheets.” (‘187
patent, col. 2, ll. 64-66) The method includes the known steps of “(a)
placing the sheet on a sheet-receiving surface, (b) sensing the precise
positions of the marks with a main sensor, and (c) cutting the graphics
area(s) from the sheet in response to such precise positions.” (Id. at col. 3,
ll. 48-52.) The improvement includes additional steps “which automatically
enable the process to proceed regardless of whether or not the sheet has been
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placed in an expected position and orientation on the sheet-receiving
surface.” (Id. at col. 3, ll. 52-55.) These additional steps involve:
. . . determining whether the reference features are in an
expected coordinate region on the sheet receiving surface. If the
reference features of the sheet are not in the expected
coordinate region, the coordinate region of the reference
features is automatically determined. Further additional steps
include sensing the metrics of the reference features to
determine the position and orientation of the sheet and inferring
therefrom the approximate positions of the registration marks.
(Id. at col. 3, ll. 56-64.)
Claims 1, 3-8, 13, and 17-22 are subject to reexamination (Right of
Notice of Appeal (“RAN”) 1, September 30, 2010). The patentability of
claims 1, 3-8, 13, and 17-22 was confirmed (id.) The Requester appeals
from the Examiner’s determination not to adopt the following rejections
(RAN 2):
1. Claims 1, 7, 8, 13, and 17-22 as anticipated under 35 U.S.C.
§ 102(b) by Summagraphics;1
2. Claims 1, 3-8, 13, and 17-22 as obvious under 35 U.S.C. § 103(a)
in view of Summagraphics and Silverberg;2 and
3. Claims 1, 3-8, 13, and 17-22 as obvious under 35 U.S.C. § 103(a)
in view of Summagraphics and Arcaro.3
Claims 1, 13, and 17 are representative and read as follows:

1 Gerard Verdonck, EP 0 704 283 A1, published March 4, 1998.
2 Eric Silverberg, et al., US 4,734,716, issued March 29, 1998.
3 David J. Arcaro, et al., US 5,790,915, issued August 4, 1998.
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Claim 1:
In a method for cutting at least one graphics area from a
sheet of material bearing a combination of such graphics area(s)
and a plurality of registration marks in predetermined positions
with respect to the graphics area(s), such combination being in
a predetermined approximate position and orientation with
respect to a set of reference features of the sheet of
material, the method including (a) placing the sheet of material
on a sheet-receiving surface, (b) sensing precise positions of the
marks with a main sensor, and (c) cutting the graphics area(s)
from the sheet of material in response to such precise positions,
the improvement comprising: automatically determining
whether the reference features are in an expected coordinate
region on the sheet-receiving surface; if the reference features
of the sheet of material are not in the expected coordinate
region, automatically determining the coordinate region of the
reference features on the sheet-receiving surface; sensing
metrics of the reference features to determine a position and
orientation of the sheet of material; and inferring therefrom the
approximate positions of the registration marks.

Claim 13:
In apparatus for cutting at least one graphics area from a
sheet of material bearing a combination of such graphics area(
s) and a plurality of registration marks in predetermined
positions with respect to the graphics area(s), such combination
being in a predetermined approximate position and orientation
with respect to a set of reference features of the sheet of
material, such apparatus including (a) a sheet-receiving surface,
(b) a main sensor, (c) a cutter operatively connected to the
sensor and adapted to move about the sheet-receiving surface to
cut the graphics area(s) from the sheet of material in response to
precise positions of the marks sensed by the main sensor, the
improvement comprising; reference feature identifier means for
automatically determining a coordinate region of the reference
features if the reference features are not in an expected
coordinate region on the sheet-receiving surface, and for
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sensing metrics of the reference features in order to infer the
approximate positions of the registration marks when the
coordinate region of the reference features is known.

Claim 17:
The apparatus of claim 13 wherein the reference feature
identifier means includes controller means for (a) moving the
main sensor in a predetermined pattern surrounding the
expected coordinate region of the reference features, and (b)
stopping the movement of the main sensor when the reference
features are located within the field of view of the main sensor.

1. ANTICIPATION BY SUMMAGRAPHICS
Claims 1, 7, 8, 19, 20, 21, and 22
Claim interpretation
Claim 1 is directed to a method “method for cutting at least one
graphics area from a sheet of material bearing a combination of such
graphics area(s) and a plurality of registration marks in predetermined
positions with respect to the graphics area(s).” The claim is in “Jepson”
format. A Jepson claim is a claim that begins with the recitation of known
or conventional method steps (“in a method for”) and includes a transitional
phrase (“the improvement comprising”) followed by the recitation of
“[t]hose elements, steps, and/or relationships which constitute that portion of
the claimed combination which the applicant considers as the new or
improved portion.” 37 CFR § 1.75(e)(3).4 The so-called Jepson format is

4 § 1.75(e) Where the nature of the case admits, as in the case of an
improvement, any independent claim should contain in the following order:
(1) A preamble comprising a general description of all the elements or
steps of the claimed combination which are conventional or known,
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used to indicate that the invention claimed is an improvement of a
conventional or known product or method (Manual of Patent Examination
and Procedure (“MPEP”) § 2129; 37 C.F.R. § 1.75(e)).
Steps (a) through (c) of the claimed method are recited after the claim
preamble, but before the transitional “improvement comprising” phrase.
Therefore, we treat steps (a) through (c) as known or conventional method
steps of a cutting a graphic from a sheet. The improvement in the known
method is explicitly recited in the claim as follows (paragraphing, spacing,
and indenting have been added for clarity, but are not present in the original
claim):
the improvement comprising:
automatically determining whether the reference features
are in an expected coordinate region on the sheet-receiving
surface;
if the reference features of the sheet of material are not in
the expected coordinate region,
automatically determining the coordinate region of the
reference features on the sheet-receiving surface;
sensing metrics of the reference features to determine a
position and orientation of the sheet of material; and
inferring therefrom the approximate positions of the
registration marks.
The ‘187 patent does not provide a definition of the term “reference
features,” but it does provide examples of them. Figure 9B, reproduced
below, shows reference features 51.

(2) A phrase such as “wherein the improvement comprises,” and
(3) Those elements, steps, and/or relationships which constitute that
portion of the claimed combination which the applicant considers as the new
or improved portion.
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Figure 9B shows graphic area 42a which is to be cut from sheet 40
and “reference features” 51 which include features of the graphic area 42a
and the corner of sheet 40. Numeral 44 points to the “registration marks.”
The Requester contends that registration marks can also serve as
reference features because a subset of the registration marks can be used to
infer the positions of other marks as required by the claim (App. Br. 9). The
Requester also contends that the Patent Owner took this position in related
litigation involving the ’187 patent (id.). For example, Patent Owner stated:
As referenced in the box above, the Court understood that
“although not all registration marks are reference features, any
registration maker could serve as a reference feature.”
(emphasis added) Thus, claim 1 of the ‘187 Patent reads on
OptiScout, GTK CutPro and GTK Touch & Cut when such
systems use only ordinary registration marks to determine the
position and orientation of the sheet and to direct cutting . . .
MGE’s Brief in Support of Summary Judgment of Infringement of MGE’s
‘168 and ‘187 Patents at 23, Mikkelsen Graphic Eng’g, Inc., v. Zund
Systemtechnik, AG, No. 07-CV-391 (E.D. Wis. June 21, 2010). As
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Requester’s interpretation of reference features to include registration marks
is reasonable and supported by a preponderance of the evidence, we adopt it.
According to claim 1, the method first determines if the reference
features are in the expected location on the sheet. If not, the method finds
them, senses their metrics (such as angle or coordinate position of the
reference feature), and uses this information to infer the position of the
registration marks on the sheet (‘187 patent, col. 4, l. 66 to col. 5, l. 14). The
registration marks 44 are then subsequently used to determine the path on
which to cut the graphic area 42a (id. at col. 8, l. 66 to col. 9, l. 23; Fig. 9B).
The ‘187 patent specifically describes the method as an improvement
over existing methods (‘187 patent, col. 2, ll. 64-67). The “Summary of the
Invention” specifically describes the same steps recited after the
improvement clause in claim 1 as the “invention” (id. at col. 3, ll. 52-64).
For this reason, even though the conditional term “if” is used in the steps
which follow the “improvement” clause, one of ordinary skill in the art
would understand, and we likewise interpret, these steps to be mandatory,
and not optional, because otherwise the claim would read on methods
acknowledged in the claim and in the ‘187 written description to be prior art.

Finding of Fact (“FF”) on Summagraphics
[FF1] Summagraphics describes a method and device for cutting a
pattern in a sheet material (Abstract).

[FF2] The method comprises (col. 2, l. 54 to col. 3, l. 9):
(iv) deriving from data provided by the detector the actual
positions of the marker prints with respect to said co-ordinate
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system, comparing these actual positions with the
predetermined positions and

[FF3]
deriving transformation relations which transform the co-
ordinates of the predetermined positions into the actual
positions of the marker prints, thus taking into account any
translation, rotation or distortion of the sheet material fed in the
cutting device,

[FF4]
(v) generating, by means of said transformation relations, from
said first set of points a first set of transformed points, said
transformed points defining a transformed pattern that is to be
positioned in said first relationship with respect to the actual
figure on the sheet material in the cutting device, and

[FF5] In one embodiment, the detector is described as follows (col. 4,
ll. 23-29):
. . . the detector means comprize [sic] a light source, projecting
a scanning light beam upon the surface layer to be reflected by
that layer and a light sensor detecting the reflected beam.
Preferably, the light beam is to be scanned in two mutual
substantial perpendicular directions

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Non-adopted rejection & analysis
Because steps (a)-(c) of claim 1 are the conventional steps in cutting
graphic areas from sheets (supra. at 5-6), we shall consider only those steps
recited after the improvement clause when comparing claim 1 to the prior
art.
The Requester contends that Summagraphics describes the claimed
improvement steps of “sensing metrics of the reference features” and
“inferring therefrom the approximate positions of the registration marks.” In
making this assertion, the Requester contends that the “marker prints” in
Summagraphics, which serve the same purpose as “registration marks” in
the ‘187 patent, are “reference features” as recited in the claim (App. Br. 9).
The Requester’s interpretation is reasonable and we adopted it (supra. at 5-
6).
The Requester further states:
Summagraphics teaches searching for the marker prints, i.e.
reference feature, by scanning over the sheet. Summagraphics,
Col. 4, lines 23-29. In this way, the system of Summagraphics
is able to determine a position and orientation of the sheet of
material. See id. Thus, Summagraphics in fact discloses the
limitation of inferring the approximate positions of the
registration marks from sensing metrics of the reference feature
to determine a position and orientation of the sheet of material
as claimed.
(App. Br. 10.)
The Requester’s analysis is not supported by a preponderance of the
evidence.
Summagraphics describes detecting the actual positions of the marker
prints and then comparing them to their expected and predetermined
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positions (FF2). This disclosure meets the recited limitation in claim 1 of
“automatically determining whether the reference features are in an expected
coordinate region on the sheet-receiving surface.”
When the actual and expected positions do not match (the “if” clause
in claim 1), Summagraphics describes “deriving a transformation relations”
which are used to generate transformed points and then then to determine or
infer the position of the figure which is to be cut out from the sheet (FF3 &
FF4). Summagraphics thus uses the “reference features” (or “marker prints”
in its parlance) to infer the position of a figure’s graphic area (FF4). Claim
1, however, requires that the “reference features” be used to infer the
position of “registration marks.” Thus, Summagraphic infers the position of
the graphic art (“figure”) from the reference features, not the position of its
registration marks (“marker prints”) as required by claim 1. Consequently,
the Examiner’s decision not to adopt the anticipation rejection of claim 1
(RAN 3: 9 to 4:2) is supported by a preponderance of the evidence.
We affirm the Examiner’s decision not to adopt the rejection of claim
1 as anticipated under 35 U.S.C. § 102(b) by Summagraphics. Claims 19
and 21 are method claims that also comprise an “inferring” step.
Consequently we affirm the Examiner’s decision not to adopt the
anticipation rejection of these claims, as well.
Dependent claims 7, 8, 20, and 22 each incorporate all the limitations
of independent claims 1, 19, or 21. As the evidence did not establish that
Summagraphics anticipated claims 1, 19, and 21, we conclude that
dependent claims 7, 8, 20, and 22 are not anticipated by Summagraphics for
at least the same reason.
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Claims 13, 17, and 18
Claim interpretation
Claim 13 is directed to an apparatus. The apparatus is claimed in
Jepson format, as is claim 1. The improvement is recited as follows
(reformatted from the original by adding paragraphs, spacing, and
indentations to emphasize the different limitations in the claims):
the improvement comprising:
reference feature identifier means
for automatically determining a coordinate region of the
reference features if the reference features are not in an
expected coordinate region on the sheet-receiving surface, and
for sensing metrics of the reference features in order to
infer the approximate positions of the registration marks when
the coordinate region of the reference features is known.
The presence of the word “means” in the “reference feature identifier
means” invokes a presumption that § 112, sixth paragraph applies. York
Prods., Inc. v. Central Tractor Farm & Family Ctr. 99 F.3d 1568, 1572
(Fed. Cir. 1996) (“The use of the word ‘means,’ which is part of the classic
template for functional claim elements, gives rise to ‘a presumption that the
inventor used the term advisedly to invoke the statutory mandates for means-
plus-function clauses.’”). Under § 112, sixth paragraph, we construe the
“means-plus-function” claim language ‘to cover the corresponding structure,
material, or acts described in the specification and equivalents thereof.’”
Valmont Indus. Inc. v. Reinke Mfg Co. Inc., 983 F.2d 1039, 1042 (Fed. Cir.
1993).
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“The first step in construing a means-plus-function claim
limitation is to define the particular function of the claim
limitation.” Golight, Inc. v. Wal-Mart Stores, Inc., 355 F.3d
1327, 1333 (Fed. Cir. 2004) (citation omitted). “The court must
construe the function of a means-plus function limitation to
include the limitations contained in the claim language, and
only those limitations.” Cardiac Pacemakers, Inc. v. St. Jude
Med., Inc., 296 F.3d 1106, 1113 (Fed. Cir. 2002). . . .
“The next step in construing a means-plus-function claim
limitation is to look to the specification and identify the
corresponding structure for that function.” Golight, 355 F.3d at
1334. “Under this second step, structure disclosed in the
specification is corresponding structure only if the specification
or prosecution history clearly links or associates that structure
to the function recited in the claim.” Med. Instrumentation &
Diagnostics Corp. v. Elekta AB, 344 F.3d 1205, 1210 (Fed. Cir.
2003) (internal citation and quotation omitted).
In re Aoyama, 656 F.3d 1293, 1297 (Fed. Cir. 2011).
Thus, first we must define the function of the means-plus-function
claim limitation. The claimed reference feature identifier means is recited in
the claim to have two functions: 1) “automatically determining a coordinate
region of the reference features” and 2) “sensing metrics of the reference
features in order to infer the approximate positions of the registration
marks.” Next, we must look to the specification and identify the
corresponding structure for those functions. Aoyama, 656 F.3d at 1297.

• Automatic determining step
In one embodiment, the “automatically determining” of the coordinate
region is described in the ‘187 patent specification to involve moving and
stopping a main sensor over the reference features (‘187 patent, col. 4, ll. 6-
13). In another embodiment, the “automatically determining” step involves
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“enlarging the field of view of the main sensor, thereby locating the
coordinate region of the set of reference features within an enlarged field of
view.” (Id. at col. 4, ll. 16-20.) The main sensor is then repositioned (id. at
col. 4, ll. 20-21). Other embodiments of this step involve zooming the main
sensor on the reference features (id. at col. 4, ll. 23-29).
In describing four embodiments of the reference feature identifier, the
‘187 patent specification discloses that each has a controller with
instructions for moving the sensor (‘187 patent, col. 5, ll. 15-50). The
instructions vary depending on how the locating of the reference features is
accomplished (id.).
In sum, the ‘187 patent describes the structure utilized to perform the
“automatically determining” of the coordinate region as comprising a main
sensor and a controller with locating instructions for locating the reference
features using the sensor.

• Metric sensing step
The sensing metric function is described in the ‘187 patent as
performed by a sensor (col. 3, l. 65 to col. 4, l. 5; col. 7, ll. 41-53). Thus, the
structure used to accomplish the sensing metric function is a sensor.
Claim 13 recites that the “sensing metrics” is performed “in order to
infer the approximate positions of the registration marks when the
coordinate region of the reference features is known.” The phrase “in order
to” is not defined in the ‘187 patent. Consequently we adopt its ordinary
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meaning to mean “for the purpose of.”5 Thus, the “sensing metrics” step is
performed for the purpose of inferring the positions of the registration
marks. We interpret the claim to require that the reference feature identifier
have a structure to sense metrics (“for sensing metrics”). However, we
discern no language in the claim that would cause the “in order to infer”
clause to be construed to add structure to the recited reference identifier. In
other words, the “in order to infer” clause describes an intended use of the
metric sensing information that does not further limit the claim.

Analysis
The issue in the rejection of claim 13 is whether Summagraphics
describes the structures, or equivalents thereof, to the claimed reference
feature identifier means.
Two functions of the reference feature identifier means were
identified: 1) “automatically determining a coordinate region of the
reference features” and 2) “sensing metrics of the reference features in order
to infer the approximate positions of the registration marks.” We
determined that the automatically determining function was performed by a
main sensor and a controller with instructions, and that the sensing metric
function was performed by a main sensor. We therefore look to the
Summagraphics disclosure to determine whether such structures, or their
equivalents, are described therein.

5 http://www.thefreedictionary.com/in+order+to. Accessed February 14,
2012.
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Summagraphics describes a “detector” for deriving the actual
coordinate positions of marker prints (FF2). The parties do not dispute that
a detector is the same structure as a sensor, or a structure equivalent to it.
The detector is described as a scanning light beam that scans in two
substantially perpendicular directions (FF5). Summagraphics does not
explicitly disclose that the scanning in two directions is controlled by a
controller with instructions. However, the presence of such a controller with
instructions would be reasonably inferred and inherent as the structure
necessary to “tell the sensor to scan in two perpendicular directions.” (RAN
5). Thus, Summagraphics describes a detector and a controller with
instructions, the same or equivalent structures to those described in the ‘187
patent for performing the step of “automatically determining a coordinate
region of the reference features.”
The detector of Summagraphics is used to derive the coordinate
positions of marker prints (FF2). We found that marker prints can serve as
reference features. Summagraphics detects the coordinate positions of the
marker prints (FF2 & FF3). Coordinate positions are defined as metrics in
the ‘187 patent (supra. at p. 8; ‘187 patent, col. 4, l. 66 to col. 5, l. 14). Thus,
Summagraphics uses the same structure – a detector – as in the ‘187 patent
to sense the metrics of the reference features.
In sum, we conclude that Summagraphics describes a reference
feature identifier means having the same, or equivalent structure, to the
reference feature identifier means recited in claim 13. We also do not find
persuasive evidence as to why claim 18, which depends on claim 13, should
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be treated separately. Consequently, we reverse the Examiner’s decision to
not to adopt the rejection of claims 13 and 18.

Claim 17
Claim 17 recites:
(a) moving the main sensor in a predetermined pattern
surrounding the expected coordinate region of the reference
features, and (b) stopping the movement of the main sensor
when the reference features are located within the field of view
of the main sensor.
Summagraphics describes moving its detector in two perpendicular
directions, but it does not describe stopping its movement when the
reference features (“marker prints”) are within the field of view. The
Requester acknowledges there is no explicit disclosure of this step, but
contends it’s necessarily inherent.
Next, while Summagraphics does not explicitly disclose
stopping the movement of the main sensor when the reference
features are located within a field of view, such operation is
necessarily inherent. Once the reference features are located,
there is no need to continue to search the sheet for the reference
features and such operation would be superfluous.
(App. Br. 12.)
Requester’s argument is not persuasive. Requester did not provide
evidence that continuing to search, without stopping the sensor, would have
necessarily been superfluous, nor that a skilled worker, upon reading
Summagraphics, would have necessarily recognized that the stopping step
was described by Summagraphics. “Inherent anticipation requires that the
missing descriptive material is ‘necessarily present,’ not merely probably or
possibly present, in the prior art.” Trintec Indus. v. Top-U.S.A., 295 F.3d
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1292, 1295 (Fed. Cir. 2002). Arguments of counsel cannot take the place of
evidence lacking in the record. Estee Lauder, Inc. v. L'Oreal, S.A., 129 F.3d
588, 595 (Fed. Cir. 1997). For the foregoing reason, we affirm the
Examiner’s decision not to adopt the rejection of claim 17 as anticipated by
Summagraphics.

2. OBVIOUSNESS IN VIEW OF
SUMMAGRAPHICS AND SILVERBERG
The Requester cited Silverberg for describing using an edge of a sheet
as a reference feature to align the sheet on a plotter (App. Br. 13). However,
Silverberg is not described by the Requester as teaching a step of “inferring
therefrom [the metrics of the reference features,] the approximate positions
of the registration marks, which was the step we found in claim 1 to be
missing from Summagraphic’s method. As such step is missing from
Summagraphics and the Requester did not explain how this step is suggested
by the combination of Summagraphics and Silverberg, we affirm the
Examiner’s decision not to adopt the rejection of claims 1, 3-8, and 19-22 as
obvious in view of Summagraphics and Silverberg.
With respect to claim 17, we found no explicit disclosure of the
recited “stopping” limitation in Summagraphics. As this limitation is
missing from Summagraphics and the Requester did not explain how this
step is suggested by the combination of Summagraphics and Silverberg, we
affirm the Examiner’s decision not to adopt the rejection of claim 17.
With respect to claims 13 and 18, we found that Summagraphics
anticipated the subject matter of these claims. As anticipation is the epitome
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of obviousness, we reverse the Examiner’s determination that claims 13 and
18 are not obvious in view of Summagraphics and Silverberg.

3. OBVIOUSNESS IN VIEW OF
SUMMAGRAPHICS AND ARCARO
The Requester cited Arcaro for its description of a reference feature of
text or dots (App. Br. 16). However, Arcaro is not described by the
Requester as teaching a step of “inferring therefrom [the metrics of the
reference features,] the approximate positions of the registration marks, the
step we found in claim 1 to be missing from Summagraphic’s method. As
such step is missing from Summagraphics and the Requester did not explain
how this step is suggested by the combination of Summagraphics and
Silverberg, we affirm the Examiner’s decision not to adopt the rejection of
claims 1, 3-8, and 19-22 as obvious in view of Summagraphics and
Silverberg.
With respect to claim 17, we found no explicit disclosure of the
recited “stopping” limitation in Summagraphics. As this limitation is
missing from Summagraphics and the Requester did not explain how this
step is suggested by the combination of Summagraphics and Arcaro, we
affirm the Examiner’s decision not to adopt the rejection of claim 17.
With respect to claims 13 and 18, we found that Summagraphics
anticipated the subject matter of these claims. As anticipation is the epitome
of obviousness, we reverse the Examiner’s determination that claims 13 and
18 are not obvious in view of Summagraphics and Arcaro.

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20
SUMMARY
1. We affirm the Examiner’s decision not to adopt the rejection of
claims 1, 7, 8, 17, and 19-22 as anticipated under 35 U.S.C. § 102(b) by
Summagraphics.
2. We reverse the Examiner’s decision not to adopt the rejection of
claims 13 and 18 as anticipated under 35 U.S.C. § 102(b) by
Summagraphics.
3. We affirm the Examiner’s decision not to adopt the rejection of
claims 1, 3-8, 17, and 19-22 as obvious under 35 U.S.C. § 103 in view of
Summagraphics and Silverberg.
4. We reverse the Examiner’s decision not to adopt the rejection of
claims 13 and 18 as obvious under 35 U.S.C. § 103 in view of
Summagraphics and Silverberg.
5. We affirm the Examiner’s decision not to adopt the rejection of
claims 1, 3-8, 17, and 19-22 as obvious under 35 U.S.C. § 103 in view of
Summagraphics and Arcaro.
6. We reverse the Examiner’s decision not to adopt the rejection of
claims 13 and 18 as obvious under 35 U.S.C. § 103 in view of
Summagraphics and Arcaro.

NEW GROUNDS OF REJECTION
37 C.F.R. § 41.77(a) states that “[t]he reversal of the examiner’s
determination not to make a rejection proposed by the third party requester
constitutes a decision adverse to the patentability of the claims which are
subject to that proposed rejection which will be set forth in the decision of
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21
the Board of Patent Appeals and Interferences as a new ground of
rejection . . . .” As we have reversed the Examiner’s decision not to adopt
certain proposed rejections, we are compelled to enter a new grounds of
rejection.
37 C.F.R. § 41.77(b) states:
(b) Should the Board reverse the examiner’s determination not
to make a rejection proposed by a requester, the Board shall set
forth in the opinion in support of its decision a new ground of
rejection; or should 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. Any decision which includes a new
ground of rejection pursuant to this paragraph shall not be
considered final for judicial review. When the Board makes a
new ground of rejection, the owner, within one month from the
date of the decision, must exercise one of the following two
options with respect to the new ground of rejection to avoid
termination of the appeal proceeding as to the rejected claim:

(1) Reopen prosecution. The owner may file a response
requesting reopening of prosecution before the examiner. Such
a response must be either an amendment of the claims so
rejected or new evidence relating to the claims so rejected, or
both.

(2) Request rehearing. The owner may request that the
proceeding be reheard under § 41.79 by the Board upon the
same record. The request for rehearing must address any new
ground of rejection and state with particularity the points
believed to have been misapprehended or overlooked in
entering the new ground of rejection and also state all other
grounds upon which rehearing is sought.

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Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. See 37 C.F.R. § 41.79.

AFFIRMED-IN-PART; REVERSED-IN-PART; 37 C.F.R. § 41.77(b)

ack

cc

Patent Owner:

JANSSON, SHUPE & MUNGER, LTD
245 MAIN STREET
RACINE, WI 53403

Third Party Requester:
BOYLE FREDRICKSON S.c.
840 NORTH PLANKINTON AVENUE
MILWAUKEE, WI 53203