Ex Parte 7,963,468 et al

Patent Trial and Appeal Board

Aug 22, 2017

95001723 (P.T.A.B. Aug. 22, 2017)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,723 09/02/2011 7,963,468 015849-9113 3174
909 7590 08/23/2017
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
FLANAGAN, BEVERLY MEINDL
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/23/2017 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 PATENT TRIAL AND APPEAL BOARD
________________

ACCO BRANDS CORPORATION
Respondent, Requester
v.
FELLOWES, INC.
Appellant, Patent Owner
________________

Appeal 2013-010043
Reexamination Control 95/001,723
Patent No. US 7,963,468 B2
Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REMAND FROM THE
UNITED STATES COURT OF APPEAL FOR THE FEDERAL CIRCUIT

STATEMENT OF THE CASE 1
The Appellant/Patent Owner appeals from a final rejection of claims 2
9-12 of the patent undergoing reexamination (“ʼ468 patent”). This appeal is 3
on remand from a decision of the U.S. Court of Appeal for the Federal 4
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Circuit reversing the holding of our “Decision on Appeal,” mailed February 1
7, 2014 (“Prior Board Decision”), and our “Decision on Request for 2
Rehearing,” mailed July 18, 2014 (“Prior Rehearing Decision”). See ACCO 3
Brands Corp. v. Fellowes, Inc., 813 F.3d 1361 (Fed. Cir. 2016). We retain 4
jurisdiction under pre-AIA 35 U.S.C. § 134(b) and 35 U.S.C. § 315(a). 5
Having reconsidered our original holding in view of the instructions 6
received from the Court of Appeals, we AFFIRM the Examiner’s decision 7
rejecting independent claims 9 and 11 under pre-AIA 35 U.S.C. § 103(a) as 8
being unpatentable over Utility Model JP S57-70445U, published April 28, 9
1982 (“JP ʼ445”),1 in view of any of GBC SHREDMASTER Models 2230S, 10
2250X Paper Shredders Service Manual, published in or about November 11
1997 (“GBC SHREDMASTER Manual”); Chang (US 6,550,701 B1, issued 12
Apr. 22, 2003); Tsai (US 5,775,605, issued July 7, 1998); Araki (US 13
4,842,205, issued June 27, 1989); or Bosland (US 3,724,766, issued Apr. 3, 14
1973). In addition, we also AFFIRM the Examiner’s decision rejecting 15
dependent claims 10 and 12 under § 103(a) as being unpatentable over JP 16
ʼ445, GBC SHREDMASTER Manual and Yoshida (JP H09-38513A, publ. 17
Feb. 10, 1997).2 18

1 References to “JP ʼ445” will be to an English-language translation of
Utility Model JP S57-70445U in Appendix B to the Request, dated on
August 23, 2011. A copy of the translation is of record in this proceeding.
2 References to “Yoshida” will be to an English-language translation
prepared by Asian Technical Translation Pty Ltd. The translation was filed
in Appendix C to the Request and is of record in this proceeding. Yoshida
was referred to as “JP ʼ513” in the RAN and the briefs.
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THE CLAIMED SUBJECT MATTER 1
The claims on appeal relate to a shredder including a controller 200 2
and a shredder mechanism 16. (ʼ468 patent, col. 3, ll. 41–43; col. 6, ll. 45–3
49; & Fig. 6). The shredder mechanism 16 includes shafts 20 mounting 4
cutter elements 19. (ʼ468 patent, col. 3, ll. 50–62; & Fig. 8). The controller 5
200 receives signals from a thickness detector 100 and from an infrared 6
presence sensor 150 located below the thickness detector 100 along a side of 7
a feed-aperture 36. (ʼ468 patent, col. 6, ll. 45–49; col. 10, ll. 38–44; & Fig. 8
6). The sensor 150 detects the presence of an article for shredding. 9
Typically, the receipt of a signal from the presence sensor 150 causes the 10
controller 200 to signal a motor 18 to start turning the shafts 20 and the 11
cutter elements 19 to shred the detected article. (ʼ468 patent, col. 10, ll. 44–12
47; & Figs. 6 & 11). A thickness detector 100 detects overly thick stacks of 13
articles that could jam the shredder mechanism 16. When the thickness 14
detector 100 detects that an article entering the throat 36 is too thick for the 15
shredder to macerate without jamming, the controller 200 can prevent the 16
motor 18 of the shredder from operating notwithstanding the receipt of a 17
signal from the presence sensor 150. (ʼ468 patent, col. 6, ll. 45–49; col. 10, 18
ll. 47–53; & Figs. 6 and 11; see also “Declaration of Tai-Hoon Matlin under 19
37 C.F.R. § 1.132,” dated January 10, 2012 (“Matlin Decl.”), para. 25). 20
Representative claims 9 and 10 are reproduced below, with italics 21
added to claim 9 to identify limitations in dispute: 22
9. A shredding machine for shredding sheet material, the 23
machine comprising 24
a feed-aperture and an electric cutting mechanism, the 25
feed-aperture being configured to receive multiple sheets and 26
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direct said sheets in a feeding direction towards the cutting 1
mechanism for shredding, 2
the machine being characterized by the provision of a 3
thickness detector which is moveable between a first position in 4
which the thickness detector permits energization of the cutting 5
mechanism and a second position in which the thickness detector 6
prevents energization of the cutting mechanism, wherein part of 7
the thickness detector extends into the feed-aperture, the 8
thickness detector being configured such that said part will be 9
engaged by sheet material inserted in the feeding direction into 10
the feed-aperture prior to reaching the cutting mechanism, and 11
moved from said first position to said second position as a result 12
of said engagement, if the sheet material exceeds a 13
predetermined thickness; 14
further provided with maximum thickness indicating 15
means to provide a visual indication to a user of the machine that 16
energization of the cutting mechanism is prevented due to the 17
sheet material moving said part of the thickness detector to said 18
second position; 19
further comprising a presence sensor along the feed-20
aperture for detecting a presence of the sheet material inserted 21
into the feed-aperture, and a controller coupled to the thickness 22
detector, the presence sensor, the maximum thickness indicating 23
means, and the electric cutting mechanism, 24
wherein the controller is configured to start energization 25
of the cutting mechanism only in response to the presence sensor 26
detecting the presence of the sheet material inserted into the 27
feed-aperture and the part of the thickness detector not having 28
been moved to the second position by the sheet material; 29
wherein the controller is configured to prevent the starting 30
of energization of the cutting mechanism and also actuate the 31
maximum thickness indicating means to provide the visual 32
indication in response to the part of the thickness detector 33
moving to the second position. 34
(App. Br. PO 45 (Claims App’x)). 35
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10. A shredding machine according to claim 9, wherein said 1
thickness detector includes a sensor and the part is coupled to a 2
detectable element movable for detection by the sensor, and 3
wherein said thickness detector is configured such that 4
movement of said part in the feed-aperture amplifies movement 5
of the detectable element at the sensor. 6
(App. Br. PO 46 (Claims App’x)). 7
8
THE PRIOR BOARD DECISION 9
In the Prior Board Decision, we determined that claim 9 was 10
representative. (See Prior Board Decision 8). We found that JP ʼ445 11
described a paper shredder satisfying each limitation of representative claim 12
9 except those italicized above. (See Prior Board Decision 8–11, FF 1 & 5–13
8; see also id. 22, citing RAN 4). The Prior Board Decision also adopted the 14
Examiner’s finding that GBC SHREDMASTER Manual, Chang, Tsai, Araki 15
and Bosland individually taught “the convention of using a presence sensor 16
[in a shredder] to automatically turn the cutting mechanism on whenever 17
sheet material is being inserted into the feed aperture.” (See Prior Board 18
Decision 22 & 23, quoting RAN 11, 12 & 13). Although we found that “the 19
problem of shredder jamming was known as of the filing date of the [JP] 20
ʼ445 patent” (Prior Board Decision 9, FF 2), we also found that “none of the 21
references cited in the rejections on appeal teach a shredding machine 22
including a controller prevented from starting to supply energy to a motor 23
driving the cutting element where sheet material is present but is sufficiently 24
thick that a jam is likely” (Prior Board Decision 10, FF 4). 25
The Examiner found that one of ordinary skill in the art would have 26
had reason to add a presence sensor to the shredding machine described in 27
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JP ʼ445, namely, to automatically turn on the cutting mechanism when 1
papers were inserted in the feed-aperture. The Examiner reasoned that it 2
would have been obvious: 3
to modify JP ʼ445 to include a presence sensor in the feed-4
aperture . . . so that the cutting mechanism [could] turn on 5
automatically when it sense[d] paper of a proper thickness [was] 6
being inserted into the feed-aperture[;] and modify the controller 7
so that it [could] handle the respective functions of the presence 8
sensor, thickness detector, cutting mechanism and warning lamp. 9
(RAN 9). The Examiner additionally reasoned that: 10
There [were] only two ways to include the presence sensor in the 11
feed-aperture, either before or after the thickness detector 2 of JP 12
ʼ445. Placing it before the thickness detector would [have 13
turned] on the cutting mechanism just to have the cutting 14
mechanism to turn off a split second [later] when the thickness 15
detector detect[ed] too much paper [was] being inserted in the 16
feed aperture. This [was] a waste of energy, wear and tear on the 17
cutting mechanism[,] and would [have confused and alarmed] 18
the user. Placing the presence sensor after the thickness detector 19
would have [had] the thickness detector detect first whether or 20
not the paper exceed[ed] the predetermined maximum amount of 21
paper before the paper reache[d] the presence sensor. If the paper 22
being inserted exceed[ed] the maximum thickness[,] the 23
thickness detector would [have prevented] communication 24
between the power source and the shredder motor such that when 25
the excessive paper reache[d] the presence sensor and the 26
presence sensor attempt[ed] to turn on the shredder motor, the 27
presence sensor wouldn’t [have been] able to turn on the shredder 28
because the thickness detector [would have] already disabled the 29
cutting mechanism. One of ordinary skill in the art would [have 30
determined] the second scenario [was] the better alternative. 31
(RAN 5 & 6; see also Resp. Br. 5–7, quoting “Declaration of Paul Aries,” 32
executed Feb. 8, 2012 (“Aries Decl.”), paras. 15–17). 33
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We disagreed, concluding that one of ordinary skill in the art would 1
not have had reason to modify a controller of a shredding machine so as to 2
satisfy the functional limitations recited in the last two “wherein” clauses of 3
claim 9. More specifically, we concluded that, 4
Based on the evidence, only impermissible hindsight would have 5
led one of ordinary skill in the art to configure the controller to 6
perform the additional function of preventing the starting of 7
energization of the cutting mechanism in response to the part of 8
the thickness detector moving to the second position. Although 9
the Examiner provide[d] reasoning to explain why one of 10
ordinary skill in the art might have placed a thickness detector 11
upstream of a presence sensor in the feed aperture of a shredding 12
machine, this reasoning [did] not explain why one of ordinary 13
skill might have configured a controller to perform the function 14
recited in claim 9. 15
(Prior Board Decision 27). Based on this reasoning, we concluded that the 16
subject matter of representative claim 9 was not prima facie obvious over the 17
teachings of JP ʼ445 in view of the teachings of the secondary references. 18
We adhered to our conclusion in the Prior Rehearing Decision. 19
Having reached this conclusion, we did not address the Patent 20
Owner’s objective evidence supporting patentability. (See Prior Board 21
Decision 28). Neither did we address the patentability of dependent claims 22
10 and 12 separately from the patentability of the independent claims. (See 23
Prior Board Decision 27 & 28). 24
25
THE REMAND BY THE COURT OF APPEALS 26
The Court of Appeals reversed this holding. In doing so, the Court 27
held that it would have been prima facie obvious to combine a presence 28
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sensor and a thickness sensor in a single shredder. More specifically, the 1
Court agreed with the Examiner that: 2
JP ʼ445 does not explicitly disclose any way to turn on the 3
shredder motor, explaining only that its invention involve[d] 4
cutting power to the motor when the thickness sensor detect[ed] 5
that too much paper ha[d] been fed into the shredder. . . . The 6
prior art disclose[d] presence sensors and controllers as a 7
common way to turn a shredder motor on. The ordinary artisan 8
would therefore [have found] motivation to modify the invention 9
JP ʼ445 disclose[d] to include this well-known means to turn the 10
shredder motor on. 11
ACCO Brands, 813 F.3d at 1366.3 12
The Court of Appeals observed that JP ʼ445 located the thickness 13
detector in the shredder’s feed, whereas various secondary references 14

3 The Court provided a second rationale for this holding. The Court
noted our findings that at least two secondary references, GBC
SHREDMASTER Manual and Araki, described shredders including both
controllers and presence sensors. The controllers described by GBC
SHREDMASTER Manual and Araki additionally included jam-detection
circuitry for cutting off power to the shredder motors when the circuitry
detected increases in power demand indicative of jams. Characterizing jam
detection circuitry such as that taught in GBC SHREDMASTER Manual
and Araki as “imperfect attempt[s] to solve” the known problem of paper
jamming in shredders, the Court concluded that it would have been obvious
merely to substitute thickness detectors such as those described by JP ʼ445
for the jam detection circuitry to better address the problem. ACCO Brands,
831 F.3d at 1366.
We do not discuss this second rationale further in this opinion.
Because this second rationale is framed in terms of modifying the teachings
of the putative secondary reference, GBC SHREDMASTER Manual, rather
than the teachings of the putative primary reference, JP ʼ445, the rationale
may be considered potentially as changing the thrust of the rejection entered
by the Examiner. Hence, we address only the first rationale.
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located their presence sensors in the same feed. See ACCO Brands, 813 1
F.3d at 1367. This arrangement would have left one of ordinary skill in the 2
art only two choices with respect to the relative placement of the thickness 3
detector and the presence sensor: either the presence sensor must be located 4
ahead of the thickness detector in the throat of the shredder, or the presence 5
sensor must be located behind the thickness detector. The Court of Appeals 6
held that the latter placement “necessarily satisfies the claim limitations.” 7
Id. Indeed, the Court of Appeals reports that “Fellowes’ counsel 8
acknowledged at oral argument that this particular configuration meets the 9
limitations of its independent claims.” Id. 10
In the Prior Board Decision, the Board found that one of ordinary skill 11
in the art would not have had reason to modify a shredder controller in a 12
fashion satisfying the last two “wherein” clauses of claim 9. The Court of 13
Appeals held that “[s]ubstantial evidence does not support this finding; to 14
the contrary, the evidence compels the opposite conclusion.” ACCO Brands, 15
813 F.3d at 1367. The Court acknowledged the Patent Owner’s contention 16
that the two “wherein” clauses were “central to the patent’s inventive 17
concept: [that] the claimed shredder improved upon the prior art 18
. . . because [the shredder would start] only when all conditions for 19
successful shredding were satisfied rather than starting the shredder and then 20
stopping after detecting a jam.” ACCO Brands, 813 F.3d at 1365. 21
Nevertheless, the claims, rather than an inventive concept, defined the 22
invention for purposes of the obviousness analysis, KSR Int’l Co. v. Teleflex, 23
Inc., 550 U.S. 398, 419 (2007); and the Patent Owner conceded before the 24
Court that the modifications proposed by the Examiner and the Requester 25
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would have satisfied the limitations of the claims. See ACCO Brands, 813 1
F.3d at 1367. 2
3
ISSUES 4
The Court of Appeals remanded the appeal to us to address those 5
issues that we earlier declined to address based on our conclusion that a 6
prima facie case of obviousness had not been proven. ACCO Brands, 813 7
F.3d at 1368. Based on the Court’s instructions, we address the following 8
three issues: 9
First, considering the evidence as a whole, including both the prior art 10
and declaration testimony adduced by the Requester; and the objective 11
evidence adduced by the Patent Owner, would the subject matter of 12
independent claims 9 and 11 have been obvious? 13
Second, does either JP ʼ445 or Yoshida teach away from the subject 14
matter of claims 10 and 12? 15
Third, considering the evidence as a whole, including both the prior 16
art and the declaration testimony adduced by the Requester; and the 17
objective evidence adduced by the Patent Owner, would the subject matter 18
of dependent claims 10 and 12 have been obvious? 19
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FINDINGS OF FACT 1
We re-adopt Findings of Fact (“FF”) 1–38, appearing at pages 8–21 of 2
the Prior Board Decision. The record supports the following additional, 3
consecutively numbered findings of fact by a preponderance of the evidence. 4
5
Introduction 6
39. The named inventor of the ʼ468 patent, Tai-Hoon Matlin, 7
testifies that: 8
Jamming of shredders has been a problem since the very creation 9
of shredders many decades ago, and an effective and practical 10
solution that actually prevents jams from occurring in a reliable 11
manner has eluded shredder manufacturers and designers for 12
decades. . . . Shredder jamming is a serious concern that results 13
in breakage of shredders, burn out of shredder motors, returns of 14
shredders and related warranty claims, customer dissatisfaction, 15
and safety issues involved with people attempting to manually 16
rip paper from sharp cutting teeth. Damage relating to jams is 17
the number one reason for shredder complaints, returns and 18
warranty claims. 19
(Matlin Decl., paras. 5 & 6; accord App. Br. PO 26 & 27). At minimum, the 20
problem of shredder jamming was known as of the filing date of the JP ʼ445 21
patent, namely, October 16, 1980. (Prior Board Decision 9, ll. 23 & 24 (FF 22
2, citing JP ʼ445 at 1); see also ACCO Brands, 813 F.3d at 1366). 23
40. JP ʼ445 teaches a solution for preventing paper jams in 24
shredding machines. (See Resp. Br. 20). We agree with the Requester’s 25
expert, Paul Aries, that “JP ʼ445 is directed to finding a way to prevent 26
shredder jamming before it occurs.” (Aries Decl., para. 7). In particular, we 27
agree with the expert’s testimony that the shredding machine described in JP 28
ʼ445 includes: 29
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a thickness detector in the throat of the shredder and upstream of 1
the cutting blades. The thickness detector is designed to detect 2
the thickness of a stack of sheets inserted into the throat, and if 3
the stack is determined to be too thick, the shredder will activate 4
a warning lamp or buzzer to alert a user to stop the cause of the 5
excessive loading, or will simply cut electrical power to the 6
motor. Both options are clearly intended to prevent jamming 7
before it occurs, with the warning lamp or buzzer option relying 8
on user action, and the option of cutting electrical power to the 9
motor being the automated solution. 10
(Id.) 11
41. Mr. Aries’ testimony that “JP ʼ445 is directed to finding a way 12
to prevent shredder jamming before it occurs” (Aries Decl., para. 7) is 13
supported by the teachings of JP ʼ445. JP ʼ445 teaches that a conventional 14
shredder with a circuit breaker capable of disconnecting power to the motor 15
driving the cutting blades in response to an increase in the current load of the 16
motor (such as the “jam stopper” circuitry described by GBC 17
SHREDMASTER manual) may allow an excessive thickness of paper to 18
reach the cutting blades. If an excessive thickness of paper were to reach the 19
cutting blades, the excessive thickness of paper might impose an excessive 20
mechanical load on speed-reducing gears transferring power from the motor 21
to the cutting shafts. (See JP ʼ445 at 1, quoted in Prior Board Decision 9 (FF 22
2); see also Prior Board Decision 14 & 15 (FF 18–20)). JP ʼ445 addresses 23
this problem by either warning the user that an excessive thickness has been 24
inserted into the shredder; or by cutting power to the motor when an 25
excessive thickness is detected. JP ʼ445 teaches that “[t]his arrangement can 26
prevent an excessively large load out of the rated range of use from being 27
applied to the speed reduction portion disposed between the motor and the 28
shredding portion.” (JP ʼ445 at 3). Because the teachings of JP ’445 could 29
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overcome the need to overdesign the speed-reducing gears only if the 1
determination apparatus prevented jams, at least during normal use of the 2
shredder, we agree with the Examiner’s finding that JP ʼ445 prevents 3
jamming when the shredder is put to normal use. (See RAN 21; see also 4
Resp. Br. Req’r 21; Aries Decl., para. 9). 5
6
Findings Related to Long Felt Need 7
42. Mr. Matlin criticizes the solution taught by JP ʼ445: 8
In JP ʼ445, the motor is running and is only stopped in response 9
to the thickness detector detecting an overly thick stack of 10
documents inserted into the shredder. However, the problem 11
with that approach is that the shredder is running, and the user 12
can stick paper past the thickness detector and into the cutter 13
elements. While the thickness detector may attempt to stop the 14
motor, there will be both an inherent lag in the signal to stop 15
power to the motor, and the momentum of the cutter elements 16
will cause them to continue to rotate into engagement with the 17
paper. This results in the problem of the paper being grabbed 18
and jammed into the cutter elements despite the thickness 19
detector attempting to cut-off power to the motor[.] 20
(Matlin Decl., para. 21; “Declaration of Tai-Hoon Matlin under 37 C.F.R. 21
§ 1.132,” executed May 14, 2012 (“Supp. Matlin Decl.”), para. 4). 22
43. In other words, Mr. Matlin testifies that a time delay may exist 23
between the actuation of the lever in the thickness detector due to contact 24
with an excessive thickness of paper, on the one hand, and the stoppage of 25
the cutting rotors of the shredder, on the other. This time delay may be due 26
to factors such as the finite time required for mechanical parts within the 27
switch to move relative to each other so as to break electrical contact across 28
the switch (see Supp. Matlin Decl., para. 5); time required to overcome 29
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“electrical hysteresis,” that is, electromagnetic forces opposing the reduction 1
in current flow across the switch as electrical contact is broken (see id., para. 2
6); the finite time required for the cut-off of the power to propagate from the 3
switch to the motor driving the cutting blades and shafts (see id., para. 5); 4
and the time required for frictional forces acting on the cutting shafts to 5
overcome the inertia of the blades and shafts after power is cut off from the 6
motor (see id., para. 10). Mr. Matlin suggests that the lever and switch 7
described in JP ʼ445 do not prevent paper jamming because a user may 8
shove paper past the lever and into engagement with the cutting blades 9
before the switch can stop the movement of the cutting shafts. (See Supp. 10
Matlin Decl., para. 5). 11
44. Applying the teachings of JP ’445 would have already 12
addressed any such delay in the stoppage of the rotating blades asserted by 13
Mr. Matlin. JP ʼ445 taught that, in “the case of employing the warning 14
apparatus, the shredder should be designed so that a sufficient distance is 15
provided between the detection portion and the shredding portion, whereby 16
the shredder user can have sufficient time to stop the motor or the supply of 17
papers after receiving the warning.” (JP ʼ445 at 2). As Mr. Aries correctly 18
testifies, this teaching would have suggested providing sufficient distance 19
between the thickness detector and the cutting blades, in the case where 20
power was to be cut off on the detection of an excessive thickness of paper, 21
to allow the blades to stop, before the paper reached the blades. (See Aries 22
Decl., para. 9). 23
45. We adopt the Examiner’s finding that: 24
The JP ʼ445 shredder DOES in fact prevent jamming when the 25
shredder is put to normal use. During normal operation, when 26
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the thickness detector 2 [described in JP ʼ445] detects paper has 1
exceeded the maximum thickness within the feed aperture, the 2
[determination apparatus] 3 will shut down the cutting 3
elements[,] thereby preventing jamming BEFORE jamming 4
occurs. 5
(RAN 20). As Mr. Matlin points out, the thickness detector 2 described in 6
JP ʼ445 may not prevent the activation of the shredder motor if an excessive 7
thickness is inserted too quickly or violently, so as to reach the blades before 8
the determination apparatus can cut power to the motor. Although it is 9
foreseeable that a user may insert an excessive thickness in a quick or 10
violent manner, we do not characterize what is essentially abuse of the 11
shredder as normal use. 12
46. As support for a finding that jamming remained a problem after 13
the publication of JP ʼ445, the Patent Owner’s expert reports the results of a 14
2003 market research study involving interviews with three-hundred and 15
forty home business owners and three-hundred thirty-one consumers that 16
used shredders. According to the study results, a significant majority of the 17
interviewees said that the number one and two most important features of 18
shredders were “Reliability—works every time you need it” and “Does not 19
jam or rarely jams.” (Matlin Decl., para. 7). Mr. Matlin characterizes the 20
study as “show[ing] that avoiding jamming, or features that directly benefit 21
from avoiding jamming, were far and away the most importan[t] features to 22
shredder purchasers.” (Id.) 23
47. The study does not persuade us that a solution to a jamming 24
problem remained a need felt in the art. In particular, no details are provided 25
concerning how the interviewees were selected; who conducted the 26
interviews; under what conditions were the interviews conducted; what 27
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questions were asked the interviewees to prompt the quoted responses; or 1
how the interviewees’ actual responses were grouped under general 2
categories such as “Reliability—works every time you need it” and “Does 3
not jam or rarely jams.” Without this information, the study is entitled to 4
limited weight.4 In particular, the study does not persuade us that there 5
remained a need in the art to solve shredder jamming. 6
48. Mr. Matlin testifies that the “patent literature and commercial 7
products are replete with numerous attempts to solve shredder jamming.” 8
(Matlin Decl., para. 8). One such approach, taught in GBC 9
SHREDMASTER Manual and Araki, sensed when the motor was 10
overloaded (such as by detecting an increase in the current drawn by the 11
motor or a decrease on the speed of the motor shaft) and then either stopped 12
the motor; increased the power to the motor in an attempt to “power 13
through” the jam; or reversed the motor in an attempt to clear the blades. 14
(See Matlin Decl., paras. 12 & 20). In at least its general outlines, this 15
approach predated JP ʼ445. In fact, JP ʼ445 presented its thickness detector 16
as an improvement over shredders in which the power supplied to the motors 17
was cut in response to an increase on the load imposed on the motor. (See 18
JP ʼ445 at 1). As such, the approach is weak evidence, at most, of a 19

4 We note that the Court of Appeals, in Coach Servs. Inc. v. Triumph
Learning LLC, 668 F.3d 1356 (Fed. Cir. 2012), upheld the decision of the
Trademark Trial and Appeal Board to give limited weight to a brand
awareness study in the context of a dilution claim, at least in part because the
party relying on the study “did not offer a witness with first-hand knowledge
of the study to explain how it was conducted.” Id. at 1375.
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continuing need in the art for a solution to jamming after the publication of 1
JP ʼ445. 2
49. Mr. Matlin testifies that others taught using larger and more 3
powerful motors and speed-reducing gears, or gear shifting, either to 4
increase the thickness of paper that can be inserted into the shredder before 5
the shredder jams or to “power through” jams once such jams are detected. 6
(See Matlin Decl., paras. 9–13). The author of JP ʼ445 at least knew about, 7
and criticized, the use of larger and more powerful speed-reducing gears to 8
increase the thickness that might be inserted into a shredder without causing 9
a jam. (See JP ʼ445 at 1). These approaches, also, are weak evidence of a 10
continuing need in the art for a solution to jamming after the publication of 11
JP ʼ445. 12
50. Paragraph 3 of Aries (US 2007/0246582 A1, publ. Oct. 25, 13
2007), Exh. 3 to App. Br. PO, describes the problem of paper jamming in 14
shredders. Paragraph 4 says that it was desirable “to provide a simple and 15
convenient mechanism to prevent overloading of a paper-shredder by 16
inserting sheet material of too great a thickness in the manner described 17
below.” Despite the Patent Owner’s arguments to the contrary (see App. Br. 18
PO 32), the Patent Owner has not pointed to any statement in Aries that 19
persuades us that Aries claimed to have solved a jamming problem not 20
already solved by JP ʼ445. In this regard, the fact that the inventor of Aires 21
was not familiar with the solution suggested by JP ’445 does not 22
persuasively establish that JP ’445 failed to provide a solution. 23
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Findings Related to Competitive Products and Advertising Subsequent to 1
theʼ468 Patent 2
51. The Requester sold at least seven lines of shredders including 3
anti-jam technology. Mr. Matlin testifies that the shredders in these seven 4
product lines embodied the subject matter of claims 9 and 11. (See Marlin 5
Decl., para. 30 & Exh. D). The Requester offers no persuasive evidence to 6
the contrary in this proceeding. The Patent Owner cites these products, 7
along with associated advertising, as evidence both of industry praise for the 8
claimed subject matter; and that the claimed subject matter satisfied a long 9
felt need for a solution to the problem of paper jamming. (See App. Br. PO 10
36, 37 & 39; Matlin Decl., para. 28). 11
52. In a sponsored article published May 2011, the Requester 12
discussed its REXEL MERCURY range of anti-jam shredders. (See 13
Tempest, Leading Insights, Office Prod. Int’l., May 2011 at 29, Exh. A to 14
Matlin Decl.; see also Matlin Decl., para. 20). According to the article, the 15
Requester observed at least as early as 2005, a year-to-two-years prior to the 16
filing date of a parent of the application that issued as the ʼ468 patent, that 17
“consumers hate paper jamming—that frustrating moment when the 18
machine stops with a [sheaf] of half-shredded paper stuck in its mouth, 19
which no amount of tugging will free. The usual result is much lost time 20
and enough shredded paper to create the impression that one has a massive 21
dandruff problem!” (Id.) In 2007, subsequent to the publication of 22
Application US 11/444,491, the parent of the application that issued as the 23
ʼ468 patent, the Requester launched its REXEL MERCURY range of anti-24
jam shredders in Europe. In touting these anti-jam shredders, the Requester 25
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said that, “[u]sing patented sensing technology5 to inform the user that they 1
are about to demand too much of the machine and to reduce the number of 2
sheets, the simple promise is ‘Jam free performance every time.’” (Id.) 3
53. In an undated flyer, reproduced as Exhibit B to the Matlin 4
Decl., the Requester touted its REXEL MERCURY range of anti-jam 5
shredders as “shredders that think for themselves.” According to the flyer, 6
the shredders included visual indicators that display the color red when a 7
jam was imminent and the color green otherwise: “Red says stop. Red says 8
I’ve just saved you from jamming your shredder. Red says I’ve stopped 9
your wasting your time, effort and frustration to unjam me. Red says no 10
mess, no problem[;]” and “Green says go. Green says shred with 11
confidence. Green says you have enough to worry about already. Green 12
says I won’t jam.” (Matlin Decl., para. 28). 13
54. Mr. Matlin also testifies that the at least four lines of shredders 14
sold under the STAPLES mark by Royal Appliance Manufacturing Co., 15
d/b/a TTI Floor Care North America, embodied the subject matter of claims 16
9 and 11. (See Marlin Decl., para. 32 & Exh. E). The Requester offers no 17
persuasive evidence to the contrary in this proceeding. Boxes for these 18
shredders carry the legend “ANTI-JAM.” (See App. Br. PO 36, 37 & 39; 19
Matlin Decl., para. 28). 20

5 The Request holds its own patents related to thickness detection in
shredders. For example, ACCO UK Ltd., an entity related to the Requester,
is named as assignee on the face of Aries (US 7,624,938 B2, issued Dec. 1,
2009). (See Aries Decl., para. 18).
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GBC SHREDMASTER Manual 1
55. GBC SHREDMASTER Manual describes the GBC 2
SHREDMASTER 2230S and 2250X shredders as “designed for small 3
offices and low volume requirements.” (GBC SHREDMASTER Manual 4). 4
5
ANALYSIS 6
Claims 9 and 11 7
Pursuant to the instruction received from the Court of Appeals, we 8
have reweighed the evidence in this reexamination, including both the prior 9
art on which the Examiner and the Requester rely as evidence that claims 9 10
and 11 are unpatentable, and the objective evidence submitted by the Patent 11
Owner. Based on our weighing the evidence, we conclude that the subject 12
matter of claims 9 and 11 would have been obvious. Claim 9 is 13
representative. 14
We are persuaded that the subject matter of claim 9 would have been 15
obvious notwithstanding the Patent Owner’s evidence relating to alleged 16
long felt need and subsequent adoption. In particular, we agree with the 17
Examiner that the Patent Owner failed to prove a long felt need for a 18
solution to the problem of shredder jamming prior to the filing of the 19
application that issued as the ʼ468 patent. The teachings of JP ʼ445 provided 20
a solution to the problem of shredder jamming, at least in normal use. (See 21
supra, FF 45). See Newell Cos. v. Kenney Mfg. Co., 864 F.2d 757, 768 (Fed. 22
Cir. 1988)(once another supplies a key element of the claimed subject 23
matter, there is no longer a long felt need). Mr. Matlin’s criticisms of the 24
solution taught by JP ʼ445 (see supra, FF 42 & 43) are not persuasive (see 25
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supra, FF 45 & 46), particularly in view of Mr. Matlin’s failure to cite any 1
contemporary patents or printed publications acknowledging these criticisms 2
of the teachings of JP ʼ445. 3
We are aware that a thickness detector similar to that described in JP 4
ʼ445 is not described in any patent or printed publication of record in this 5
proceeding dated between the publication of JP ʼ445 and the filing of 6
Application US 11/444,491, the parent of the application that issued as the 7
ʼ468 patent. We are also aware of Mr. Matlin’s testimony seeking to prove 8
failed attempts on the part of others to address shredder jamming. (See 9
supra, FF 48 & 49). In addition, we are aware of Mr. Matlin’s testimony 10
that the Requester and other competitors introduced lines of shredders 11
including anti-jam technology after the publication of Application US 12
11/444,491. (See supra, FF 51–54). These facts do not persuade us that the 13
practitioners in the pertinent art regarded the teachings of JP ʼ445 as a failed 14
attempt to solve the problem of shredder jamming; or that there remained a 15
need in the art after the publication of JP ʼ445 for a solution to shredder 16
jamming. 17
Several of the attempts to solve the problem of shredder jamming 18
described in paragraphs 9–20 of the Matlin Declaration pre-dated the filing 19
date of JP ʼ445. In particular, the author of JP ʼ445 both knew about, and 20
criticized, the use of “jam stopper” circuitry such as that described in GBC 21
SHREDMASTER Manual to detect shredder jamming, as well as the 22
mechanical reinforcement of parts such as the reduction gears to increase the 23
thickness of paper that might be shredded at one time without jamming. 24
(See supra, FF 48 & 49). Neither evidence of a need for a solution to the 25
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problem of shredder jamming prior to the filing of JP ʼ445, nor evidence of 1
failed attempts to solve the problem before that date, suggest that the 2
teachings of JP ʼ445 itself failed to satisfy the need to address the problem. 3
See Graham v. John Deere Co., 383 U.S. 1, 36 (1966). Mr. Matlin admits 4
that other “attempts” described in the Matlin Declaration addressed specific 5
problems caused by shredder jamming. (See, e.g., Matlin Decl., paras. 17 & 6
18). Such “attempts” did not imply continuing efforts, or a continuing felt 7
need, for a solution to the problem of shredder jamming itself. 8
Likewise, the absence of a description of a thickness detector similar 9
to that described in JP ʼ445 in any patent or printed publication of record in 10
this proceeding dated between the publication of JP ʼ445 and the filing of 11
parent Application US 11/444,491, combined with the introduction by the 12
Request and other competitors of lines of shredders including anti-jam 13
technology similar to that claimed in the appealed claims after the 14
publication of Application US 11/444,491, does not persuade us that 15
practitioners in the pertinent art regarded the teachings of JP ʼ445 as a failed 16
attempt to solve the problem of shredder jamming; or that there remained a 17
need in the art after the publication of JP ʼ445 for a solution to shredder 18
jamming. Mr. Aries’ testimony regarding independent efforts to develop 19
anti-jamming technology for shredders is sufficient to rebut any assertion 20
that the Requester copied the Patent Owner’s technology for purposes of this 21
proceeding. (See, e.g., Resp. Br. Req’r 7 n.1, citing Aries Decl., para. 18; 22
see also RAN 17 & 19). Without persuasive evidence that the Requester 23
copied the Patent Owner’s technology, the timing of the Requester’s 24
introduction of its product lines does not persuade us that there remained a 25
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felt need in the art for a solution to shredder jamming until the Patent Owner 1
disclosed such a solution in the ʼ468 patent. 2
As to the Patent Owner’s evidence relating to industry praise or 3
copying, we adopt the findings and reasoning of the Examiner: 4
The [P]atent [O]wner’s evidence does not clearly set forth any 5
proof that competitors have provided adulation and/or praise of 6
the claimed invention. There is no evidence that anybody has 7
pointed specifically to the [ʼ468] patent and provided adulation 8
and/or praise. . . . It is not clear how much weight can be given 9
evidence of a competitor allegedly producing the same invention 10
and associate it to prove adulation and/or praise. The allegation 11
that a competitor is producing a product that performs the same 12
function as that claimed is possibly because the competitor has 13
also solved the problem of preventing jamming on their own by 14
including a thickness detector in the throat of the shredder much 15
like JP ʼ445. The allegation that someone else is making the 16
shredder as claimed does not prove patentability of the claimed 17
invention. It just means that someone else has come up with the 18
same idea. 19
(RAN 17; see also Resp. Br. Req’r 6 & 7; Aries Decl., para. 18). See Iron 20
Grip Barbell Co. v. USA Sports Inc., 392 F.3d 1317, 1325 (Fed. Cir. 2004) 21
(the sale of a product embodying technology covered by a patent claim does 22
not prove that the claim is patentable absent evidence of actual copying). 23
Even were we persuaded that the thickness detector described in JP 24
ʼ445 failed to solve the problem of shredder jamming in abnormal situations 25
where a user might force an excessive thickness of paper into the feed-26
aperture of a shredder too quickly for the thickness detector to stop the 27
rotation of the cutting blades, one of ordinary skill in the art would have had 28
reason to adopt the teachings of JP ʼ445 to address shredder jamming during 29
normal use. (See supra, FF 40, 41 & 45). Pursuant to the instructions issued 30
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us by the Court of Appeals, we find that JP ʼ445 does not describe means for 1
turning on the shredder; and that one of ordinary skill in the art would have 2
had reason to combine the thickness detector described by JP ʼ445 with a 3
presence sensor such as the mechanical actuator described by GBC 4
SHREDMASTER Manual (see Prior Board Decision 14 (FF 17)), to provide 5
means for turning on the shredder. See ACCO Brands, 813 F.3d at 1366 6
(mandating findings consistent with those of the Examiner at RAN 9). Were 7
a thickness detector and a presence sensor combined in this manner, the 8
thickness detector would have addressed the problem of shredder jamming, 9
at least during normal use. Hence, the reason for providing a presence 10
sensor in JP ’445 would not have depended on any need or desire to solve 11
the problem of shredder jamming. The failure of the patent literature to 12
expressly teach combining a presence sensor and a thickness detector in a 13
shredder cannot be explained by the art’s inability to satisfy a long felt need 14
for a solution to shredder jamming. 15
Because both the lever of the thickness detector described by JP ʼ445 16
and the mechanical actuator of the presence sensor similar to that described 17
by GBC SHREDMASTER Manual must extend into the feed aperture to 18
perform their respective functions, they can be arranged such that the 19
thickness detector is upstream, or downstream of, the presence sensor in the 20
feed-aperture. For one of ordinary skill in the art unaware of any advantage 21
inhering in the choice to arrange the thickness detector and presence sensor 22
so as to prevent a controller from starting to supply energy to a motor 23
driving the cutting elements where an excessive thickness of sheet material 24
was present in the feed-aperture (see Prior Board Decision 10 (FF 4)), it 25
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nevertheless would have been a matter of mere design choice to position the 1
thickness detector upstream of the presence sensor. Indeed, the testimony of 2
Mr. Aries indicates that reasonable experimentation involving assembling 3
and using shredders having thickness detectors either upstream or 4
downstream of the presence sensors (see Aries Decl., paras. 15–18), guided 5
by the teachings of JP ʼ445 to prevent rather than merely detect jams (see 6
supra, FF 40) and to provide sufficient distance between the thickness 7
detector and the blades to permit the thickness detector to stop the blades if 8
an excessive thickness were inserted (see supra, FF 44), would have led one 9
of ordinary skill in the art to position the thickness detector upstream of the 10
presence detector. 11
The binary choice whether to position the thickness detector upstream 12
or downstream of the presence sensor would have been framed once one of 13
ordinary skill in the art had reason to combine the thickness detector and the 14
presence sensor in a shredder. Expressed another way, the geometric 15
constraints imposed by combining a presence sensor and a thickness detector 16
in the throat of the shredder would have offered one of ordinary skill in the 17
art only two choices as to their arrangement. Whether the decision to 18
position the thickness detector upstream or downstream of the presence 19
sensor was made on the basis of trial-and-error or mere design choice, the 20
considerations that went into the decision would have been far simpler than 21
a general felt need to solve shredder jamming. The Patent Owner conceded 22
before the Court that, if the thickness detector were positioned upstream of 23
the presence sensor, the limitations of representative claim 9 would have 24
been satisfied. See ACCO Brands, 813 F.3d at 1367. 25
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As the foregoing discussion indicates, the subject matter of claim 9 1
would have been obvious in view of the teachings of JP ʼ445. Having 2
weighed all of the evidence in the record, we are persuaded that the 3
Examiner has shown, by a preponderance of the evidence, a sufficient 4
factual underpinning on which to conclude obviousness; and that the 5
Examiner correctly concluded that the subject matter of claim 9, and claim 6
11, would have been obvious. We sustain the rejection of claims 9 and 11 7
under § 103(a) as being unpatentable over JP ʼ445, in view of any of GBC 8
SHREDMASTER Manual, Chang, Tsai, Araki or Bosland. 9
10
Claims 10 and 12 11
The Examiner concludes that the subject matter of dependent claims 12
10 and 12 would have been obvious from the combined teachings of JP 13
ʼ445, GBC SHREDMASTER Manual and Yoshida. Claim 10 is 14
representative. In support of this rejection, the Examiner and the Requester 15
rely on the same findings and reasoning used to reject parent claims 9 and 16
11. The limit switch described by JP ʼ445 as a component of the 17
determining apparatus 3 constitutes a sensor. (See Prior Board Decision 11 18
(FF 8)). As depicted in the sole drawing figure of JP ʼ445, a portion of the 19
lever spaced from the lever’s pivot axis extends into the feed-aperture. A 20
mid-portion of the lever overlies a limit switch. An excessive thickness of 21
paper fed into the feed-aperture pivots the lever and activates the limit 22
switch. (See Prior Board Decision 10 & 11 (FF 6)). 23
That said, the thickness detector 2 described in JP ʼ445 does not 24
satisfy the limitation, “wherein said thickness detector is configured such 25
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that movement of said part in the feed-aperture amplifies movement of the 1
detectable element at the sensor.” Because the detectable element of the 2
lever of JP ʼ445, which engages and actuates the limit switch, is located 3
between the pivot axis of the lever and the part that extends into the feed-4
aperture for engagement by paper fed into the shredder, movement of the 5
part that extends into the feed-aperture diminishes movement of the 6
detectable element at the sensor. (See FF 6; Supp. Matlin Decl., paras. 12 & 7
13). 8
As set forth in FF 37 and 38 on page 21 of the Prior Board Decision, 9
Yoshida describes a shredder 1 having a continuous feed system 4, 5 for 10
feeding single documents at a time to motor-driven document shredding 11
means 2. (FF 37, citing Yoshida, paras. 24, 25, 35 & 40 (describing modes 12
of implementation 7 and 8); see also Yoshida, Fig. 7). In addition, Yoshida 13
describes a “mode of implementation” 8, depicted in Figures 7 and 8, in 14
which the shredder 1 includes a “sheet thickness detection sensor” 221 15
communicating with a control part or controller 10. (See FF 38, citing 16
Yoshida, para. 40 & Fig. 7). As depicted in Figure 8, Yoshida’s sheet 17
thickness detection sensor 221 consists of a pivotable lever which cooperates 18
with a photosensor 223 to determine the thickness of a sheet. (See FF 38, 19
citing Yoshida, para. 43). Figure 8 depicts the pivot point 224 of the lever as 20
being closer to the path of the paper to be shredded than to the photosensor 21
223. 22
The Examiner finds that Yoshida “teaches a sensor 223[;] and the part 23
221 includes a detectable element in which a portion thereof that is above 24
the pivot point 224 amplifies the movement of the detectable element below 25
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the pivot point.” (RAN 14, citing Request, App’x L; see also FF 38). The 1
Examiner concludes that it would have been obvious “to modify JP ʼ445 to 2
use the sheet thickness detector as taught by [Yoshida] to provide the details 3
of a sensor 223[;] and the movement of part 221 is such that it amplifies the 4
movement of the detectable element at the sensor.” (RAN 14).6 5
Mr. Aries testifies that: 6
To achieve good accuracy and sensitivity, [Yoshida] discloses an 7
arrangement in which a small amount of movement at the paper 8
end of the pivoting arm results in a larger amount of movement 9
at the sensor end of the arm. This amplification arrangement is 10
desirable and obvious when one wants to maximize the 11
sensitivity of the shredder to optimize the sheet capacity. . . . 12
Amplification is the key to this level of sensitivity. It would have 13
been merely a matter of design choice for the designer to utilize 14
a thickness detector that amplifies movement of the detectable 15
portion at the sensor, and selecting the arrangement shown in 16
[Yoshida] would have been one appropriate and obvious choice. 17
(Aries Decl., para. 20). 18

6 The Patent Owner argues that the Examiner’s rejection of claims 10
and 12 fails to satisfy the requirement for a substantial new question of
patentability pursuant to pre-AIA 35 U.S.C. § 312(a). (See App. Br. PO 23–
25). In Clarification on the Procedure for Seeking Review of a Finding of a
Substantial New Question of Patentability in Ex Parte Reexamination
Proceedings, 75 Fed. Reg. 36357–58 (U.S. Patent & Trademark Off., June
25, 2010), the Director delegated his or her authority under pre-AIA 35
U.S.C. § 312(a) to our predecessor, the Board of Patent Appeals and
Interferences, to review a challenge to an Examiner’s determination that
cited patents and printed publications raise a substantial new question in an
ex parte reexamination. The Director has made no similar delegation of
authority to review an Examiner’s determination in an inter partes
reexamination; nor has the Director delegated such authority to this panel in
this particular appeal. For this reason, we do not address the argument.
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The Examiner’s conclusion is correct. It is not clear from the 1
disclosure of JP ʼ445 why the thickness detector 2 is configured so that the 2
lever diminishes its movement due to the thickness of the paper fed into the 3
feed-aperture. It may be that the switch used is relatively stiff; and that the 4
configuration of the lever magnifies the force applied to close the switch at 5
the expense of sensitivity (see Supp. Matlin Decl., paras. 13–15), although 6
this is merely speculation. In any event, we agree with Mr. Matlin that the 7
purpose of Yoshida’s sheet thickness detection sensor 221 is to determine 8
the thickness of a single sheet passing through Yoshida’s shredder “to help 9
control the speed of the motor to match the thickness of the sheet.” (Matlin 10
Supp. Decl., para. 21; see also Yoshida, para. 39). We agree with Aries that 11
one of ordinary skill in the art would have recognized that Yoshida’s sheet 12
thickness detection sensor 221, in combination with the photosensor 223, 13
would have provided greater sensitivity to the thickness of one or more 14
sheets than would the thickness detector described in JP ʼ445; and that such 15
greater sensitivity was desirable. (See Aries Decl., para. 20 (quoted above)). 16
In view of the failure of JP ʼ445 to explain why the particular lever and limit 17
switch depicted in the drawing figure were selected, and despite that Patent 18
Owner’s arguments to the contrary (see App. Br. PO 20 & 21), one of 19
ordinary skill in the art would have had reason to substitute a sheet thickness 20
detection sensor of the type described by Yoshida for the thickness detector 21
described by JP ʼ445 for improved thickness sensitivity. 22
Yoshida criticizes manually fed shredders as inconvenient, because 23
the manual feeding of documents to be shredded is time consuming; and 24
because the feeding of too many documents at one time could cause 25
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shredder overloads. (See Prior Board Decision 21 (FF 37), citing Yoshida, 1
paras. 4 & 5). As the Patent Owner points out (see App. Br. PO 22), 2
Yoshida proposes solving the problem of shredder jams caused by manually 3
feeding too many sheets to the shredding means at one time by using a 4
continuous feed system instead of a manual feed system. (Supp. Matlin 5
Decl., para. 20). Despite the Patent Owner’s argument to the contrary (see 6
App. Br. PO 22 & 23), Yoshida’s criticism did not teach away from the 7
claimed subject matter, that is, providing a thickness detector that amplifies 8
movement of the detectable element at the sensor. 9
The shredders described by GBC SHREDMASTER Manual are 10
designed for small offices and low volume requirements. (See supra, FF 11
55). Although JP ʼ445 does not disclose that its shredder is designed for low 12
volume requirements, its sole drawing figure depicts a feed-aperture similar 13
in configuration with that depicted in Figure 3 of Bosland. Bosland decribes 14
the embodiment of Figure 3 as “economical and simple to construct” 15
(Bosland, col. 3, ll. 1 & 2); and for use in “ordinary business establishment” 16
(Bosland, col. 1, ll. 2–5). The similarity in the configuration of the two feed-17
apertures suggests that the same description applies to the shredder of JP 18
ʼ445. One of ordinary skill in the art reasonably might have chosen not to 19
follow Yoshida’s suggestion to substitute a bulky, complicated and 20
potentially expensive automatic document feed in a shredder designed for 21
ordinary business establishments or low volume requirements. See 22
Medichem, S.A. v. Rolabo, S.L., 437 F.3d 1157, 1165 (Fed. Cir. 2006)(“[A] 23
given course of action often has simultaneous advantages and disadvantages, 24
and this does not necessarily obviate motivation to combine.”). We agree 25
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with Aries that one of ordinary skill in the art would have had reason to avail 1
himself or herself of the relative sensitivity of the sheet thickness detection 2
sensor 221 described by Yoshida in order to improve the shredder suggested 3
by the combined teachings of JP ʼ445 and GBC SHREDMASTER Manual. 4
(See Aries Decl., para. 21). 5
In assessing whether the subject matter of dependent claim 10 would 6
have been obvious from the combined teachings of JP ʼ445, GBC 7
SHREDMASTER Manual and Yoshida, we have taken into account the 8
objective evidence presented by the Patent Owner relating to long felt need 9
and adoption by competitors. This evidence, as discussed earlier, is 10
primarily addressed to an alleged long felt but unmet need for a solution to 11
the problem of shredder jamming; and to competitors’ adoption of anti-jam 12
technology. We remain convinced that the proposed combination of the 13
teachings of JP ʼ445 and GBC SHREDMASTER Manual, as applied to 14
parent claims 9 and 11, would have been obvious. Nothing in the Patent 15
Owner’s arguments persuades us that the objective evidence is of greater 16
probative weight in addressing the subject matter of dependent claims 10 17
and 12. Having considered the record as a whole, we sustain the Examiner’s 18
rejection of claims 10 and 12 under § 103(a) as being unpatentable over JP 19
ʼ445, GBC SHREDMASTER Manual and Yoshida. 20
21
CONCLUSION 22
Having reconsidered our original holding in view of the instructions 23
received from the Court of Appeals, we AFFIRM the Examiner’s decision 24
rejecting independent claims 9 and 11 under § 103(a) as being unpatentable 25
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over JP ʼ445 in view of any one of GBC SHREDMASTER Manual, Chang, 1
Tsai, Araki or Bosland. 2
We also AFFIRM the Examiner’s decision rejecting dependent claims 3
10 and 12 under § 103(a) as being unpatentable over JP ʼ445, GBC 4
SHREDMASTER Manual and Yoshida. 5
6
DECISION 7
We AFFIRM the Examiner’s decision rejecting claims 9-12. 8
Requests for extensions of time in this inter partes reexamination 9
proceeding are governed by 37 C.F.R. § 1.956 (2011). A party seeking 10
judicial review must timely serve notice on the Director of the United States 11
Patent and Trademark Office. See 37 C.F.R. § 90.1 and 3 C.F.R. § 1.983. 12
13
AFFIRMED 14

PATENT OWNER:

PILLSBURY WINTHROP SHAW PITTMAN, LLP (NV)
P.O. Box 10500
McLean, VA 22102

THIRD PARTY REQUESTER:

MICHAEL BEST & FRIEDRICH LLP
100 East Wisconsin Avenue
Suite 3300
Milwaukee, WI 53202

lb