PTAB

IPR2019-00425

Xerox Corporation v. Midwest Athletics and Sports Alliance LLC

Title: Method of Printing to Form Colored Images with Improved Color Gamut and Enhanced Gloss
Brief Description: The ’582 patent discloses a method for printing using five or more color pigments (a "pentachrome" image), applying a clear toner overcoat using an image-dependent inverse mask, and subjecting the result to a gloss enhancing process to improve image quality.

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 taught a modular electrophotographic printer system with multiple color stations and a separate module for applying clear toner to control gloss. Petitioner asserted it would have been obvious to a person of ordinary skill in the art (POSITA) to configure Richards’s system with five color stations instead of four to improve color gamut. Ng ’783, which the ’582 patent itself cites, explicitly taught the claimed "inverse mask" technique, where clear toner is applied inversely to the heights of the color toner stack to level the image surface and create a uniform, glossy finish.
- Motivation to Combine: A POSITA would combine the known inverse mask technique from Ng ’783 with the modular printer of Richards to predictably improve the gloss and finish of the final image. Both references address the same technical problem of improving image quality in electrophotographic printing via clear toner application.
- Expectation of Success: The combination involved applying a known technique (the inverse mask from Ng ’783) to a conventional printing system (Richards) to achieve a well-understood and predictable result of improved gloss control.

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: Alexandrovich disclosed a modular printer with tandemly arranged image-forming modules. While it described a four-color set, it explicitly taught that the system could be expanded to exceed four modules to employ specialty or clear toners. Aslam ’234 taught a printing apparatus with five developing units (including one for clear toner) and a selectable glossing system using two different fusers (one for low gloss, one for high gloss) to achieve variable gloss output.
- Motivation to Combine: Petitioner argued that while Alexandrovich taught a modular multi-color printer, it lacked specific teachings on gloss control. A POSITA would have been motivated to combine Alexandrovich’s printer with the known selectable glossing system of Aslam ’234 to add a desirable feature. The combination would be further improved by incorporating the known inverse mask method from Ng ’783 for finer control over the clear toner layer.
- Expectation of Success: Incorporating Aslam's glossing system into Alexandrovich's printer was presented as a predictable substitution of known functional modules. A POSITA would have had a high expectation of success in combining these known elements to achieve the desired result of selectable gloss.

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: Haneda disclosed a color printer with five developing stations (including clear toner) and two different fixing units to provide two distinct gloss levels. Johnson was cited for its specific fusing unit design, which included a belt and cooling air system, aimed at creating images with a superior "photographic look and feel."
- Motivation to Combine: Petitioner contended that Haneda’s system, while offering two gloss levels, lacked the fine control necessary for high-quality finishes. A POSITA seeking to improve image quality would have turned to a reference like Johnson to incorporate a more advanced glossing unit to achieve a "photographic" effect. This combination would also logically include the inverse mask technique from Ng ’783 to further enhance surface uniformity.
- Expectation of Success: The proposed combination was argued to be an obvious improvement to enhance gloss quality and control. A POSITA would have expected success due to the known benefits of Johnson's glossing technology and the similar overall functionality of the systems being combined.

"a gloss enhancing process": Petitioner argued that, based on statements made during prosecution of the ’582 patent, 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 critical to Petitioner's arguments, as it distinguished the claimed process from the initial fusing of the color image itself and allowed prior art glossing systems (like those in Richards, Aslam, and Johnson) to be mapped to this limitation.

Petitioner requested the institution of an inter partes review and the cancellation of claims 1-6 of Patent 7,502,582 as unpatentable under 35 U.S.C. §103.