Ex Parte Castronovo

Patent Trial and Appeal Board

Sep 16, 2013

11777537 (P.T.A.B. Sep. 16, 2013)

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.
11/777,537 07/13/2007 Charles A. Castronovo 07030002CH 8740
30743 7590 09/17/2013
WHITHAM, CURTIS & CHRISTOFFERSON & COOK, P.C.
11491 SUNSET HILLS ROAD
SUITE 340
RESTON, VA 20190
EXAMINER
ROSENBAUM, MARK
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
09/17/2013 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

____________

Ex parte CHARLES A. CASTRONOVO
____________

Appeal 2011-005044
Application 11/777,537
Technology Center 3700
____________

Before JENNIFER D. BAHR, STEFAN STAICOVICI, and
MICHAEL C. ASTORINO, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2011-005044
Application 11/777,537
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STATEMENT OF THE CASE
Charles A. Castronovo (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision rejecting under 35 U.S.C. § 102(b) claim 108
as anticipated by Farnsworth (US 5,065,947, iss. Nov. 19, 1991) and under
35 U.S.C. § 103(a) claims 108 and 109 as unpatentable over Detjen (US
3,527,416, iss. Sept. 8, 1970). Appellant relies on the Declaration of Charles
Castronovo1, filed under 37 C.F.R. § 1.132 on January 20, 2010
(“Castronovo Declaration”), as evidence of non-obviousness. Claims 1-107
have been canceled. We have jurisdiction over this appeal under 35 U.S.C.
§ 6(b).

CLAIMED SUBJECT MATTER
Claims 108 and 109 are representative of the claimed invention and
read as follows:
108. A method of destroying paper, comprising:
inputting the paper into a desk-top sized machine and
within the machine converting the input entirely into high-
security output of size equal or less than the new NSA 2002
requirements.

109. A method of destroying a material selected from the
group consisting of Key Tape, a compact disk, credit card, data
card, floppy disk, a cassette tape, ATM cards, Smart cards, data
chips and data chip containing materials, comprising:
inputting the material into a desk-top sized machine and
within the machine converting the input material entirely into
powder-sized output.

1 The Declarant, Mr. Castronovo, is also the inventor in the instant
application.
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SUMMARY OF DECISION
We AFFIRM-IN-PART.

ANALYSIS
The anticipation rejection
The Examiner found that the compact shredder of Farnsworth “having
controlled feed rolls and a rotating cutter” can “shred paper to sizes that
meet the 2002 government requirements.” Ans. 3. According to the
Examiner, because the cutting blade speed varies between 8,000 and 12,000
rpm and the feed rollers speed varies between 0.25 and 1.5 inches/second,
“[t]his combination of control means results in shredded pieces of
indiscernible pieces.” Ans. 5.
Appellant argues that Farnsworth fails to teach, expressly or
inherently, “converting the input entirely into high-security output of size
equal or less than the new NSA 2002 requirements2,” as called for by claim
108. App. Br. 10. We agree.
First, Farnsworth fails to expressly teach a shredder that can
“[convert] the input entirely into high-security output of size equal or less
than the new NSA 2002 requirements,” as called for by claim 108. Second,
although we appreciate that the feed rollers speed and the cutting blades
speed of Farnsworth’s shredder are controlled, nonetheless, the Examiner
has not shown that Farnsworth’s shredder can shred paper into “high-
security output of size equal or less than the new NSA 2002 requirements,”
as called for by claim 108. “Inherent anticipation requires that the missing
descriptive material is ‘necessarily present,’ not merely probably or possibly

2 Shred size generated by a high security shredder is 1 x 5 mm. See
App. Br., App’x 19.
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Application 11/777,537
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present, in the prior art.” Trintec Indus., Inc. v. Top-U.S.A. Corp., 295 F.3d
1292, 1295 (Fed. Cir. 2002) (quoting In re Robertson, 169 F.3d 743, 745
(Fed. Cir. 1999)). In this case, Appellant’s Specification describes a cutter
speed of 15,000 rpm and a feed rate of 2.6 inches/second (13 feet/minute),
which are substantially higher than the maximum values of Farnsworth’s
cutting blade speed of 12,000 rpm and feed rollers speed of 1.5
inches/second. See Spec. 24, l. 8 and Spec. 13, ll. 10-11. Moreover, the
Examiner has not shown that Farnsworth’s “indiscernible pieces” constitute
“high-security output of size equal or less than the new NSA 2002
requirements.” See Farnsworth, col. 3, ll. 55-62. Without sufficient
evidence or reasoning to support the finding that Farnsworth shredder can
“[convert] the input entirely into high-security output of size equal or less
than the new NSA 2002 requirements,” Farnsworth does not anticipate claim
108.
Accordingly, we do not sustain the rejection of claim 108 under 35
U.S.C. § 102(b) as anticipated by Farnsworth.

The obviousness rejection
The Examiner found that Detjen discloses a paper shredder and “that
the degree of shredding can be regulated in various ways.” Ans. 4. The
Examiner concluded that, “it would have been obvious for one of ordinary
skill in the art to modify Detjen by regulating the degree of shredding such
that the NSA 2002 requirements are met since Detjen states that the degree
of shredding may be regulated to obtain the desired product size.” Id.

Appeal 2011-005044
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Claim 108
Appellant argues that the modified device of Detjen, as proposed by
the Examiner, is not capable of “converting the input entirely into high-
security output of size equal or less than the new NSA 2002 requirements.”
See App. Br. 12-13; Reply Br. 3.
In response, the Examiner opines that, “teeth of any size could be
formed to produce the desired apparatus to perform a desired shredding
function.” Ans. 6.
While the Examiner correctly points out adjusting the device of
Detjen to vary the degree of shredding, this in no way demonstrates that
Detjen’s shredding device is capable of shredding material into “high-
security output of size equal or less than the new NSA 2002 requirements.”
For example, as noted by Appellant, “if you make the teeth too small and/or
too close together, cutting won’t happen because the part that you want to
act as a cutting tooth in actuality only acts like a bristle.” Reply Br. 3. As
such, although Detjen discloses adjusting the shredder device to vary the
resulting shredded output size, the Examiner has not shown that such
adjustment would (or even could) adapt Detjen’s device to generate “high-
security output of size equal or less than the new NSA 2002 requirements,”
as called for by claim 108.
Hence, the Examiner’s conclusion of obviousness is mere speculation
and conjecture based on an unfounded assumption that adjustments to
Detjen’s device would necessarily generate “output of size equal or less than
the new NSA 2002 requirements.” Since speculation and conjecture cannot
form the basis for concluding obviousness, we do not sustain the rejection of
claim 108 under 35 U.S.C. § 103(a) as unpatentable over Detjen. See In re
Warner, 379 F.2d 1011, 1017 (CCPA 1967).
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Claim 109
Appellant argues that because “[t]hose in the destruction arts know
that destroying cardboard is quite different” from destroying the “materials
recited in [c]laim 109,” a person having ordinary skill in the art would “not
extrapolate Detjen’s cardboard destruction to such disparate materials.”
App. Br. 14.
In response, the Examiner opines that because in Detjen “various
materials could be treated with the process/apparatus,” there is “no reason
why the process/apparatus of Detjen could not treat at least one of the
materials listed in the claim.” Ans. 6.
Detjen specifically discloses a shredding device that disintegrates3
cardboard, corrugated board, paper, other suitably textured materials, and
organic materials. Detjen, col. 1, ll. 11-12 and 29-31; col. 2, ll. 69-72; col. 3,
ll. 2-3; and col. 6, ll. 68-70. Detjen further discloses adjusting the degree of
shredding by adjusting vacuum exit port size (col. 6, ll. 23-26); adjusting
teeth position and relative speed of rotary base plate 2 (col. 6, ll. 41-43); and
adjusting the teeth interspacings of feeder roll 8 and rotating base plate 2
(col. 6, ll. 56-60). Furthermore, although Appellant’s Specification
mentions the term “powder” on several occasions, the Specification fails to
define the term “powder-sized.” An ordinary and customary meaning of the
term “powder” is “matter in a finely divided state : particulate matter.”
Merriam Webster’s Collegiate Dictionary (10th Ed. 1997). Thus, although
we appreciate Appellant’s position that cardboard and the materials recited
in claim 109 are different, nonetheless, the Examiner is on solid ground to

3 An ordinary and customary meaning of the term “disintegrate” is “to
break or decompose onto constituent elements, parts, or small particles.”
Merriam Webster’s Collegiate Dictionary (10th Ed. 1997).
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conclude that a person of ordinary skill in the art would be able to make
appropriate adjustments to the shredder of Detjen to disintegrate any of the
materials of claim 109 into “powder-sized output.” See In re Spada, 911
F.2d 705, 708 (Fed Cir. 1990). Attorney argument such as, “the best that a
Detjen structure could do . . . is to break [each material of claim 109] up a
bit” (see Reply Br. 3), cannot take the place of evidence in the record. Estee
Lauder, Inc. v. L'Oreal, S.A., 129 F.3d 588, 595 (Fed. Cir. 1997).
Lastly, we are not persuaded by paragraphs 7 and 8 of the Castronovo
Declaration, which discusses the disclosure of Detjen, because claim 109
does not require that the destroyed material be converted into NSA-2002
pieces, but rather it merely requires that the destroyed material be converted
into “powder-sized output.” See also Reply Br. 2-3.
In conclusion, for the foregoing reasons, we sustain the rejection of
claim 109 under 35 U.S.C. § 103(a) as unpatentable over Detjen.

SUMMARY
The Examiner’s decision is reversed as to claim 108 and affirmed as
to claim 109.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136(a)(1)(iv).

AFFIRMED-IN-PART

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