PTAB

IPR2019-00425

Xerox Corp v. Midwest Athletics Sports Alliance LLC

Log In
Key Events
Petition
petition

1. Case Identification

2. Patent Overview

  • Title: Method of Printing with Improved Color Gamut and Enhanced Gloss
  • Brief Description: The ’582 patent relates to methods for color electrostatographic printing to produce images with improved color gamut and gloss. The claimed method involves forming a pentachrome (five-color) image, depositing a clear toner overcoat using an image-dependent inverse mask, and subjecting the combined image to a gloss enhancing process.

3. Grounds for Unpatentability

Ground 1: Claims 1-6 are obvious over Richards in view of Ng ’783.

  • Prior Art Relied Upon: Richards (Patent 6,535,712) and Ng ’783 (Patent 5,234,783).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Richards disclosed a modular printing system with tandem color toner application units that "may be present in any number," which would have made it obvious to use five or more color stations to form a pentachrome image. Richards further taught applying a clear toner overcoat and using "gloss control systems" that measure and iteratively apply clear toner to achieve a desired gloss level, which Petitioner asserted met the "gloss enhancing process" limitation. Petitioner contended that Ng ’783, which was cited in the ’582 patent itself, remedied Richards’s lack of a specific method for applying clear toner by expressly teaching the use of an image-dependent "inverse mask" to level the toner stack and create a uniform gloss.
    • Motivation to Combine: A POSITA would combine the known inverse mask technique from Ng ’783 with Richards's printing system to achieve the predictable result of improved gloss control. Richards explicitly stated a goal of leveling the relief pattern of the toner, and Ng ’783 provided a known method for achieving that exact goal.
    • Expectation of Success: A POSITA would have a high expectation of success, as the combination involved applying a known gloss-leveling technique (Ng ’783) to a printing system (Richards) to achieve its intended and known function.

Ground 2: Claims 1-3 and 5-6 are obvious over Alexandrovich in view of Aslam ’234 and Ng ’783.

  • Prior Art Relied Upon: Alexandrovich (Patent 6,608,641), Aslam ’234 (Patent 5,887,234), and Ng ’783 (Patent 5,234,783).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner asserted Alexandrovich disclosed a modular printer with tandemly arranged image-forming modules that could "exceed four" and employ "specialty color toners or clear toners," thus rendering a five-color system obvious. While Alexandrovich mentioned clear toner, it did not detail methods for gloss control. Petitioner argued a POSITA would look to a reference like Aslam ’234, which taught a reproduction apparatus with selectable image gloss achieved by using multiple fusing stations, including a belt fuser for high-gloss results. The combination of Alexandrovich and Aslam ’234 provided the pentachrome printing and gloss enhancing steps. Ng ’783 was again relied upon to supply the missing "image dependent inverse mask" limitation.
    • Motivation to Combine: A POSITA would combine Alexandrovich's modular printer with Aslam's selectable gloss control system to add the desirable feature of enhanced and selectable gloss. To implement the clear toner application mentioned in Alexandrovich, a POSITA would naturally turn to a known technique like the inverse mask from Ng ’783 to achieve uniform toner height and gloss.
    • Expectation of Success: Success was expected because the combination involved substituting known functional blocks (Aslam's fuser for Alexandrovich's) and adding a known technique (Ng's inverse mask) to achieve their predictable functions within a similar system.

Ground 3: Claims 1-6 are obvious over Haneda in view of Johnson and Ng ’783.

  • Prior Art Relied Upon: Haneda (Patent 5,260,753), Johnson (Patent 5,392,104), and Ng ’783 (Patent 5,234,783).
  • Core Argument for this Ground:
    • Prior Art Mapping: Petitioner argued that Haneda disclosed a color image forming apparatus with five developing units (CMYK plus a transparent/clear toner), directly teaching the claimed pentachrome printing. Haneda also taught two different fixing units to provide varying gloss levels. Petitioner contended that a POSITA seeking finer gloss control and a "photographic look and feel" would have been motivated to incorporate the glossing unit from Johnson, which taught a fusing roller paired with a cooling belt to create high-quality images. As Haneda did not specify a pattern for applying its clear toner, Ng ’783 was again cited to supply the teaching of an inverse mask.
    • Motivation to Combine: A POSITA would modify Haneda's system by adding or replacing one of its fixing units with Johnson's superior glossing unit to improve image quality and gloss control beyond the two basic levels offered by Haneda. To effectively apply the clear toner already present in Haneda's system, the well-known inverse mask technique from Ng ’783 would be an obvious choice to improve gloss uniformity.
    • Expectation of Success: A POSITA would have a reasonable expectation of success in combining the references, as it involved replacing components with functionally similar ones (Johnson's fuser for Haneda's) to enhance a known property (gloss) and applying a standard, compatible technique (Ng’s mask).

4. Key Claim Construction Positions

  • "a gloss enhancing process"
    • Petitioner argued this term should be construed to mean "a discrete process for enhancing the gloss of a color image on a substrate, the color image having an unfused clear toner overcoat." This construction was based on statements made during prosecution of the ’582 patent, where the applicant distinguished the invention from prior art in which fusing and glossing occurred in a single step. Petitioner asserted this construction was critical to mapping prior art references that disclose separate, post-imaging gloss control systems onto the claims.

5. Relief Requested

  • Petitioner requests institution of an inter partes review and cancellation of claims 1-6 of Patent 7,502,582 as unpatentable.