Ex Parte 7631822 et al

Patent Trial and Appeal Board

Jul 31, 2017

95001736 (P.T.A.B. Jul. 31, 2017)

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.
95/001,736 09/02/2011 7631822 015849-9104 9970
909 7590 08/01/2017
Pillsbury Winthrop Shaw Pittman, LLP
PO Box 10500
McLean, VA 22102
EXAMINER
SPAHN, GAY
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
08/01/2017 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
Requester, Respondent

v.

FELLOWES, INC.1
Patent Owner, Appellant
____________________

Appeal 2017-001274
Inter partes Reexamination Control 95/001,736
Patent US RE44,161 E2
Technology Center 3900
____________________

Before DANIEL S. SONG, RAE LYNN P. GUEST, and
BRETT C. MARTIN, Administrative Patent Judges.

SONG, Administrative Patent Judge.

DECISION ON APPEAL
STATEMENT OF THE CASE
Claims 16–22 of the ’161 patent are subject to reexamination and
stand rejected while claims 1–15 have been canceled (Right of Appeal

1 Fellowes, Incorporated is the Patent Owner and the real party in interest
(Appeal Brief of Patent Owner (hereinafter “App. Br.”) 1).
2 Patent US RE44,161 E (hereinafter “the ’161 patent”) issued April 23,
2013 to Matlin et al.
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Notice3 (hereinafter “RAN”) PTOL-2066). The Patent Owner appeals under
35 U.S.C. §§ 134(b) and 315 from the Examiner’s rejections of claims 16–
22 (App. Br. 3). We have jurisdiction under 35 U.S.C. §§ 134(b) and 315.
In addition to the Appeal Brief, the Patent Owner also relies on a
Rebuttal Brief (hereinafter “Reb. Br.”), declarations of Mr. Tai-Hoon
Matlin, and various exhibits submitted therewith, in support of its appeal.
The Requester relies on its Respondent Brief and a declaration of Mr. Paul
Aries in support of the Examiner’s rejections. Because such evidence is
referred to in the briefs and the RAN, we generally do not explicitly cite to
such evidence below, but instead, cite to the portions of the briefs and RAN
where the evidence is discussed.
We AFFIRM the Examiner’s rejections.

BACKGROUND OF THE CASE
Important background information relevant to the present
reexamination and appeal is as follows:
1. The subject RE44,161 E patent was reissued from U.S. Patent
No. 7,631,822 B2 that issued on December 15, 2009 (hereinafter “the
’822 patent”).
2. An application for reissue of the ’822 patent was filed on
February 18, 2011.

3 The Examiner’s Answer mailed March 10, 2016 incorporates the RAN by
reference. Hence, we cite to the RAN herein.
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3. The Requester requested inter partes reexamination of the ’822
patent on September 2, 2011, which is after the application for reissue
of the ’822 patent.
4. The Requester’s request for inter partes reexamination of the
’822 patent was granted and reexamination was ordered on October
26, 2011 as present Reexamination Control 95/001,736.
5. The ’822 patent is the subject of an on-going District Court
litigation (Case No. 1:10-cv-07587, N.D. Ill.), which has been stayed
pending outcome of the reexamination proceeding, and was the
subject of three other court actions in the Northern District of Ohio
that have been “closed with no further action.” (App. Br. 2).
6. The ’822 patent was reissued as RE44,161 on April 23, 2013,
which canceled the original claims 1–15 of the ’822 patent, but
including new claims 16–22 added during the reissue proceeding.
7. On June 11, 2013, the Examiner issued a Non-Final Office
Action (mailed June 11, 2013) (hereinafter “Non-Final Act.”) in the
present reexamination, rejecting the added claims 16–22 of the
reissued ’161 patent stating “[i]n view of the surrender of original
Patent No. 7,631,822 and the granting of Reissue Patent No. RE
44,161 . . . , all subsequent proceedings in this reexamination will be
based on the 7 new reissue patent claims [(i.e., claims 16–22)]” and
that “[a]ll original patent claims have been cancelled.” (Non-Final
Act. 2).
8. On August 12, 2013, the Patent Owner filed a “PETITION
UNDER 37 C.F.R. §1.181 OR §1.182 FOR TERMINATION OF INTER
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PARTES REEXAMINATION,” requesting termination of the subject
reexamination proceeding (hereinafter “Petition”).
9. The petition was dismissed in Decision Dismissing Petition
from the Office of Patent Legal Administration dated August 12, 2014
(hereinafter “Petition Decision”).
10. The ’822 patent is closely related to U.S. Patent No. 7,963,468
B2 (hereinafter “the ’468 patent”). Specifically, the ’468 patent
issued from a continuation application of the patent application that
ultimately issued as the ’822 patent.
11. The related ’468 patent was the subject of Reexamination
Control 95/001,723, which resulted in Appeal 2013-010043 at the
Board. Acco Brands Corp. v. Fellowes, Inc., 2013-010043, 2014 WL
492182 (PTAB Feb. 6, 2014).
12. In the Decision of Appeal 2013-010043, the Board reversed the
Examiner’s rejections, the Board concluding that the Examiner failed
to establish a prima facie case of obviousness based on the combined
teachings of the prior art with respect to a paper shredder “wherein the
controller is configured to prevent the starting of energization of the
cutting mechanism . . . in response to the part of the thickness detector
moving to the second position.” Acco v. Fellowes, 2014 WL 492182
at *3.
13. The Board’s decision in Appeal 2013-010043 was appealed to
the Federal Circuit. The court reversed the Board’s decision finding
that the Examiner had set forth a prima facie case of obviousness, and
remanded the case back to the Board to address whether the secondary
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considerations evidence establishes that the claims of the ’822 patent
were unobvious, and to consider whether dependent claims
unaddressed in the Board’s decision are separately patentable. Acco
Brands Corp. v. Fellowes, Inc., 813 F.3d 1361, 1367 (Fed. Cir. 2016).

THE ’161 PATENT4
The claims on appeal relate to shredders for destroying articles such
as sensitive documents, compact discs and expired credit cards (col. 1, ll.
21–26). According to the Specification of the ’161 patent, one such
shredder 10 has a shredder mechanism 16 including a plurality of cutter
elements 19 mounted on shafts 20. An electrically powered motor 18 rotates
the shafts 20 and the cutting elements 19 through a conventional
transmission (that is, gear train) 23 (col. 3, ll. 39–55; see also id. at Figs. 2
and 8). The shredder 10 receives an article for shredding through a throat or
feed-aperture 36 (col. 4, ll. 19–27).
In addition, the shredder 10 includes a controller 200. The controller
200 receives signals from a thickness detector 100 and from an infrared
presence sensor 150 located below the thickness detector 100 along a side of
the feed-aperture 36. The sensor 150 detects the presence of an article for
shredding. The thickness detector 100 detects overly thick stacks of articles
that could jam the shredder mechanism 16 (col. 6, ll. 42–46; col. 10, ll. 31–
35; and Figs. 6 and 11).

4 We cite to the Specification of the ’822 patent from which the ’161 patent
reissued.
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The Specification of the ’161 patent states, with reference to Figures 8
and 11, that:
When the sensor 150 senses that an article is passing through a
lower portion of the throat 36, the controller 200 signals the
motor 18 to start turning the shafts 20 and cutter elements 19. Of
course, because the detector 100 is also in communication with
the controller 200, if the detector 100 detects that the thickness
of the article that has entered the throat is too thick for the
capacity of the shredder mechanism 16, the shredder mechanism
16 may not operate, even though the sensor 150 has indicated
that it is time for the shredder mechanism 16 to operate.
(Col. 10, ll. 39–48).
Representative independent claim 16 reads as follows (App. Br. 43,
Claims App.).
16. (Original) A shredder comprising:
a housing having a throat open to an exterior of the
housing for permitting a user to feed at least one article to be
shredded;
a shredder mechanism received in the housing and
including an electrically powered motor and cutter elements, the
shredder mechanism enabling the at least one article fed into the
throat to be shredded to be fed into the cutter elements and the
motor being operable to drive the cutter elements in a shredding
direction so that the cutter elements shred the articles fed therein;
a thickness detector configured to detect a thickness
between opposing major surfaces of the at least one article to be
shredded being received by the throat;
a maximum thickness indicator having a visual or audible
output and configured to indicate a visual or audible signal to a
user of the shredder via the visual or audible output;
a controller configured to actuate the maximum thickness
indicator and indicate the visual or audible signal to the user via
the visual or audible output responsive to the detector detecting
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that the thickness of the at least one article is at least equal to a
predetermined maximum thickness;
wherein the detector is a thickness detector and the
shredder further comprises a presence detector configured to
detect a presence of the at least one article to be shredded being
received by the throat, wherein the controller is configured to
operate the motor to drive the cutter elements in the shredding
direction responsive to the presence detector detecting the
presence of the at least one article to be shredded being received
by the throat;
wherein the controller starts the motor to drive the cutter
elements in the shredding direction only in response to both the
presence detector detecting the presence of the at least one article
to be shredded being received by the throat and the thickness
detector detecting that the thickness thereof is less than the
predetermined maximum thickness.

REJECTIONS
The Examiner rejects the claims under 35 U.S.C. § 103(a) as follows:
1. Claims 16 and 17 as obvious over JP ’4455 in view of GBC
Shredmaster Manual6 (RAN 4–13).
2. Claim 18 as obvious over JP ’445 in view of GBC Shredmaster
Manual, and further in view of JP ’3777 (RAN 13–15).

5 Japanese Utility Model JP S57-70445U, filed on August 23, 2011
(citations to the English language translation of record).
6 GBC SHREDMASTER Models 2230S, 2250X Paper Shredders Service
Manual, published in or about November 1997 (hereinafter “GBC
Shredmaster Manual”).
7 Japanese Patent JP 07-299377, published November 14, 1995 (citations to
the English language translation of record).
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3. Claim 19 and 22 as obvious over JP ’445 in view of GBC
Shredmaster Manual, JP ’377, and further in view of JP ’5138 (RAN
15–16).
4. Claim 20 and 21 as obvious over JP ’445 in view of GBC
Shredmaster Manual, JP ’377, JP ’513, and further in view of
Schneider9 (RAN 16–17).

ISSUES
The following issues have been raised in the present appeal.
1. Whether the Patent Office has the authority to reexamine the
’161 patent.
2. Whether independent claim 16 is obvious over JP ’445 in view
of GBC Shredmaster Manual.
3. Whether the secondary considerations evidence establish non-
obviousness of claim 16.

ANALYSIS
Only those arguments actually made by the Patent Owner have been
considered and any arguments not made are deemed to be waived. See 37
C.F.R. § 41.67(c)(1)(vii). The Patent Owner submits various arguments
with respect to independent claim 16, but does not argue any of the

8 Japanese Application JP 9038513 (A), published February 10, 1997
(citations to the English language translation of record).
9 U.S. Patent No. 4,378,717 to Schneider et al., issued April 5, 1983.
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dependent claims 17–22 separately. Corresponding, claims 17–22 stand or
fall with independent claim 16.

Issue 1
The Patent Owner initially argues that the Patent Office has no
authority to reexamine the ’161 patent (App. Br. 7). The Patent Owner
observes that the present proceeding, Reexamination Control 95/001,736, is
based on a determination of a Substantially New Question of Patentability
(hereinafter “SNQP”) of the ’822 patent, but that the ’822 patent was
surrendered during the reissue proceeding initiated prior to the present
reexamination, and that the reissue application ultimately issued as the ’161
patent (id.). As such, the Patent Owner argues that:
The Office lacks authority to conduct reexamination of the ’161
reissue patent because (1) it is ineligible for reexamination since
it issued after September 16, 2012, the date the AIA [America
Invents Act of 2011] eliminated further inter partes
reexaminations, it is not the same patent as the [’]822 patent and
there is no statute or rule allowing the Office to replace an
original patent with its reissue where the claims are not
substantially identical, and (2) there is no “substantial new
question of patentability” to justify reexamination of the [’]161
patent.
(App. Br. 7–8; see also id. at 9–12).
As to the question of SNQP, the Patent Owner specifically argues that
the Examiner who conducted the reissue proceeding that resulted in the ’161
patent, already considered the same prior art and the issues raised in the
present appeal, and, thus, there can be no SNQP as to the ’161 patent even if
an inter partes reexamination was possible (App. Br. 9–12).
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However, the Patent Owner already properly petitioned these
arguments and its requested relief to the Patent Office in its Petition (Petition
3–7). These arguments have already been addressed by the Patent Office in
the Petition Decision (Petition Decision 4–6). Such matters are not
appealable to the Board.10

Issues 2 and 3
As to the substantive rejections, the Patent Owner highlights the fact
that claims of the ’161 patent and the ’468 patent subject of Appeal 2013-
010043 are substantively the same (App. Br. 13–16). In addition, the Patent
Owner also points out that the prior art relied upon for the reexaminations
between the two proceedings are the same and are applied in substantially
the same manner, and that the declaration evidence is also the same (App.
Br. 17–19). The Requester agrees with the Patent Owner that the issues
between the two appeals are the same (Corrected Respondent’s Brief
(hereinafter “Resp. Br.”) 7). Indeed, aside from some minor differences, the

10 The Patent Owner also refers to Petition Decision 6 in seeking the Board’s
review of whether SNQP exists as to the ’161 patent based on its assertion
that the same prior art and issues raised in the present appeal have already
been considered by the Examiner involved in the reissue proceeding (Reb.
Br. 2–3). However, notwithstanding the statement in page 6 of the Petition
Decision, a SNQP determination is not appealable. Specifically, the relevant
statute states “[a] determination by the Director under subsection (a) [as to
“whether a substantial new question of patentability affecting any claim of
the patent concerned is raised by the request”] shall be final and non-
appealable.” 35 U.S.C. § 312(c); see also 35 U.S.C. § 312(a). A statement
in the Petition Decision is inadequate to make the issue appealable to the
Board.

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present appeal and Appeal 2013-010043 are substantially the same with
respect to: the relevant language recited in the independent claims at issue;
the prior art rejections of the Examiner; the patentability arguments of the
Patent Owner; and the evidence submitted in support of patentability (see
generally, App. Br. 19–41). In this regard, like the present appeal, Appeal
2013-010043 involved the patentability of claims of the ’468 patent in view
of the combination of JP ’445 and GBC Shredmaster Manual. Acco v.
Fellowes, 2014 WL 492182 at *2. Accordingly, the Patent Owner initially
relies on the Board’s decision in Appeal 2013-010043 to contend
patentability of the appealed claims (App. Br. 12–13).
However, as noted above, in Acco v. Fellowes involving Appeal 2013-
010043, the Federal Circuit held that it would have been prima facie obvious
from the teachings of the art to combine a presence sensor and a thickness
detector in a shredder; that it would have been a 50-50 choice to position the
thickness detector in the throat of the shredder upstream of a presence
sensor; and that, having done so, the independent claims of the ’468 patent
would have flowed naturally from the proposed modification. Acco v.
Fellowes, 813 F.3d at 1366–67. In view of the similarities between the
present appeal and Appeal 2013-010043, Acco v. Fellowes is controlling as
to independent claim 16 of the ’161 patent, and we are bound by the Federal
Circuit’s determination that the Examiner has established a prima facie case
of obviousness in the related appeal. Acco v. Fellowes, 813 F.3d at 1366–
67.
Accordingly, we now turn to the evidence submitted by the Patent
Owner in support of non-obviousness that includes assertions of satisfaction
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of a long-felt need, as well as praise and adoption of the claimed subject
matter by others. See also Acco v. Fellowes, 813 F.3d at 1366–67
(remanding to the Board for consideration of the objective evidence).

Long-felt Need
The Patent Owner argues that “[t]here can be no reasonable dispute
that . . . jamming was a problem with shredders and there was a need for a
better way to deal with that.” (Reb. Br. 5). The Patent Owner refers to the
First Declaration of Matlin (hereinafter “1st Matlin Decl.”) as establishing
that jamming was a long-felt problem that others have failed to solve, and
that such failed solutions generally sought to address the jamming problem
after jamming occurred, for example, by monitoring the current load to the
shredder motor or increasing the shredder’s capacity (Reb. Br. 5, citing [1st]
Matlin Decl. ¶ 5; App. Br. 28–32; see also 1st Matlin Decl. ¶¶ 9–13, 20).
According to the Patent Owner, this asserted long-felt need was also
not met by JP ’445, published in 1980, but was met by the claimed invention
(Reb. Br. 6–9). The Patent Owner argues that while JP ’445 uses a thickness
detector, such use “did not necessarily mean that JP [’]445’s shredder was
adequate for jam prevention.” (Reb. Br. 7–8; see also id. at 9). Specifically,
the Patent Owner argues that:
If JP [’]445 cannot stop its already-running motor in time,
it cannot prevent a jam and thus must rely on the user to react
quickly to prevent that jam. That is the problem the Patent
Owner’s invention solves: preventing jamming by the user that
fails to use the shredder properly by shoving in too much paper
at once. Exh. 5, Matlin Decl. at ¶[¶] 23–28; Exh. 6, Supp. Matlin
Decl. at ¶ 14.
(Reb. Br. 6) (emphasis omitted).
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According to the Patent Owner, in JP ’445, “because the motor was
already running and driving the cutter elements in the first place, the cutter
elements can still continue to rotate and grab the fed paper to cause a jam.”
(Reb. Br. 8; see also Matlin Decl. ¶ 21). The Patent Owner argues that:
the claimed invention is the first to recognize the shredder
jamming problem in that light and solve it by not starting when
the imperfect user inserts too much paper at once, as opposed to
JP [’]445 that requires the user to not feed the paper too fast to
cause the jam, or to react quickly enough to prevent the jam from
happening.
(Reb. Br. 7).
However, we are not persuaded by the preponderance of the evidence
and the Patent Owner’s arguments that JP ’445 has not already met the long-
felt need of preventing shredder jamming, or that the claimed invention has
met a long-felt, unmet need. As the Examiner correctly finds, JP ’445
utilizes a paper thickness detector at the throat of the shredder, and if the
stack of paper inserted into the throat of the shredder is too thick, the power
to the motor of the shredder is terminated before the paper reaches the
shredder mechanism, thereby avoiding a jam (RAN 27, 29). Specifically,
JP ’445 teaches that:
a total thickness of paper fed to be shredded is detected, and the
exceedance of the thickness beyond a predetermined value
causes the warning apparatus to issue a warning to a user to
prompt the user to stop the supply of the excessive load or to
cause the rotation of the motor to be stopped. This arrangement
can prevent an excessively large load out of the rated range of
use from being applied to the speed reduction portion disposed
between the motor and the shredding portion.
(JP ’445, pg. 3, emphasis added).
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Pertaining to the above noted teachings of JP ’445, we generally agree
with the Requester’s Declarant, Mr. Paul Aries, that:
JP [’]445 is directed to finding a way to prevent shredder
jamming before it occurs so that expensive overdesigning of the
speed reduction portion (to accommodate high loading due to
jamming) is not needed. Its solution is the use of a thickness
detector in the throat of the shredder and upstream of the cutting
blades. The thickness detector is designed to detect the thickness
of a stack of sheets inserted into the throat, and if the stack is
determined to be too thick, the shredder will activate a warning
lamp or buzzer to alert a user to stop the cause of the excessive
loading, or will simply cut electrical power to the motor. Both
options are clearly intended to prevent jamming before it occurs,
with the warning lamp or buzzer option relying on user action,
and the option of cutting electrical power to the motor being the
automated solution.
(Aries Decl. ¶ 7).
We agree with the Examiner’s assessment that unlike the other prior
art systems noted by the Patent Owner, “JP [’]445 is a new and different way
of preventing jams by sensing the excessive amount of paper . . . being
inserted into the throat before the paper reaches the cutting elements.”
(RAN 29). We likewise agree that by utilizing a thickness detector, “JP
[’]445 appears to solve the long-felt need for a jam free shredder by
detecting the potential jam before the jam occurs” (RAN 30). Hence,
because JP ’445 has already provided a solution of utilizing a thickness
detector to address the problem of jamming in a paper shredder, the Patent
Owner’s assertion as to a long-felt, unmet need, is unpersuasive.
As to the Patent Owner’s argument that “[i]f JP [’]445 cannot stop its
already-running motor in time,” jamming would potentially occur upon
feeding of too much paper (Reb. Br. 6, emphasis added), this argument is
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unpersuasive because it is inconsistent with the teaching and intent of JP
’445, which is to provide a device in which the motor is stopped prior to
jamming. Moreover, the scenario envisioned by the Patent Owner in which
the device of JP ’445 is still capable of becoming jammed despite the use of
a thickness detector, is also similarly possible as to the claimed device.
Specifically, as the Patent Owner has explained, once the motor has started,
“even after cutting off the power to the motor[,] the angular momentum of
the cutter elements will continue to cause some rotation.” (App. Br. 23,
citing 2nd Matlin Decl. ¶ 2). Hence, as correctly observed by the Examiner
(RAN 30), the shredder of the claimed invention could also jam in a similar
manner because once the shredding process is started with the initial feeding
of paper, the user can quickly feed paper having improper thickness so as to
reach the still rotating shredding mechanism, thereby causing the claimed
shredder to jam.
The Patent Owner further argues that “the claimed invention is the
first . . . [to] solve [the jamming problem] by not starting when the imperfect
user inserts too much paper at once.” (Reb. Br. 7). However, although the
claimed invention and JP ’445 may utilize the thickness detector in a slightly
different manner, there is no requirement that the long-felt need be met in
the same manner as the manner claimed by the Patent Owner. The question
is whether the long-felt need of preventing jamming of a shredder has
already been met. The preponderance of the evidence indicates that the
long-felt need has been met by JP ’445.

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Praise and Adoption by Others
The Patent Owner further relies on alleged “evidence of adulation and
adoption by others” in support of patentability (Reb. Br. 9–10). Specifically,
the Patent Owner presents evidence that shredders of competitor Royal/TTI
prominently highlight “Anti-Jam” feature and that “Smart Sense™
technology stops jams before they start.” (App. Br. 39–40, citing 1st Martin
Decl. ¶¶ 33–34). In addition, the Patent Owner also relies on evidence that
purportedly establishes that competitor ACCO also sells products that are
encompassed by independent claim 16 (App. Br. 40, citing 1st Martin Decl.
¶¶ 29–31).
Indeed, the preponderance of the evidence of record indicates that
shredders of both Royal/TTI and ACCO utilize thickness sensors or
detectors to detect the thickness of the inserted paper, and to address the
problem of jamming. However, as correctly observed by the Examiner
(RAN 36–37), the submitted evidence does not clearly establish that the
shredders of competitors included a controller that utilizes a control strategy
using the presence detector and the thickness detector in the manner recited
in claim 16 as asserted by the Patent Owner.11
Specifically, the evidence shows that ACCO shredders incorporate
Mercury Technology that is said to provide “[s]hredders that think for
themselves,” in which:

11 The Declarations of Mr. Matlin that are of record refer to claim charts that
pertain to “Claim 42.” (1st Decl. Matlin, Exhibits D and E). Patent Owner
explained that claim 16 of the subject ’161 patent was numbered as claim 42
during its prosecution (App. Br. 10 n.2).
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[t]he brightly lit paper entry warns you whether you are trying to
shred too much [illegible]. Red light means stop, too much
paper! Remove some sheets. Get the green light and you’re ok
to go – no risk of jamming.
(App. Br., Exh. 5-14: MERCURY TECHNOLOGY PREVENTS PAPER JAMS).
However, while the submitted evidence regarding ACCO’s Mercury
Technology implicitly confirms the presence of a thickness detector in view
of the lights that illuminate based on the thickness of the fed paper, the
evidence does not indicate that the controller
starts the motor to drive the cutter elements in the shredding
direction only in response to both the presence detector detecting
the presence of the at least one article to be shredded being
received by the throat and the thickness detector detecting that
the thickness thereof is less than the predetermined maximum
thickness,
as required by claim 16.
The Patent Owner also provides various figures and a claim chart
referencing ACCO Model GDS2213 (App. Br., Exh. 5-30–5-49; 1st Matlin
Decl., Exh. D). However, as to the actual operation of the shredders by their
controller, we are merely provided with a statement by Declarant Mr. Matlin
in the submitted claim chart, which states:
Accused ACCO shredders include a controller as described
herein, including a controller configured to operate the motor to
drive the cutter elements in the shredding direction responsive to
both the presence detector detecting the presence of the at least
one article to be shredded being received by the throat and the
thickness detector detecting that the thickness thereof is less than
the predetermined maximum thickness.
See, Figures 6, 11, 12 and 16.
(App. Br., Exh. 5-32; 1st Matlin Decl., Exh. D, claim chart).
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Such conclusory statements from Mr. Matlin, who is an interested
party in the sense that he is the named inventor of the subject ’161 patent,
and a current employee of the Patent Owner (1st Matlin Decl. ¶ 1), are of
limited probative value. In addition, the evidence is not clear where the
underlying support is for referenced Figures 6, 11, 12, and 16 of Exhibit D,
and fails to disclose or otherwise indicate the control strategy used by the
controller of the shredder in utilizing the thickness detector. In fact, Figure 2
of the same exhibit states “Green light means ready to go - light turns red
when jammed.” (App. Br., Exh. 5-34, emphasis added). Thus, this
disclosure as to the function of the shredder implies that some other control
strategy is used by the ACCO’s controller instead of that recited in claim 16.
Similarly, the evidence pertaining to a Royal/TTI shredder does not
support the Patent Owner and Mr. Martin’s assertion that its controller
utilizes the control strategy recited in claim 16. In particular, the Patent
Owner provided various figures and a claim chart referencing TTI MODEL
SPL-TXC22A (App. Br., Exh. 5-50–5-70; 1st Matlin Decl., Exh. E).
However, as to the actual operation of the shredder by the controller, we are
merely provided with a conclusory statement by Declarant Mr. Matlin in the
submitted claim chart, which is similar to that provided with respect to the
ACCO shredders and is of limited probative value (App. Br. Exh. 5-51; 1st
Matlin Decl., Exh. E). The evidence fails to indicate where the underlying
support is for the figures in Exhibit E, and more importantly, fails to indicate
the control strategy used by the controller of the shredder in utilizing the
thickness detector. In fact, the evidence submitted with respect to shredder
TTI MODEL SPL-TXC22A states:
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ANTI JAM:
This unit is equipped with anti jam technology. The anti jam
icon (4) will illuminate indicating more than the maximum
allowed sheet capacity has been placed in the paper entry. The
unit will automatically reverse the paper out of the paper entry
and power down. Reduce the number of sheets and place the
paper back into the paper entry.
(App. Br., Exh. 5-70, emphasis added; 1st Matlin Decl., Exh. E, Fig. 18,
emphasis added).
Thus, this disclosure as to the function of the shredder implies some
other control strategy is used by Royal/TTI’s controller instead of that
recited in claim 16.
Accordingly, while a preponderance of the evidence indicates that
shredders of both ACCO and Royal/TTI utilize a thickness detector in their
shredders to address jamming, the evidence does not demonstrate adoption
of the claimed implementation of the thickness detector, presence detector,
and controller. Because the general use of a thickness detector was already
known in the art (see generally JP ’445), merely establishing the inclusion of
a paper thickness detector in other shredder devices for the purpose of
addressing jamming is insufficient to establish praise and adoption by others
of the claimed invention.
Furthermore, we also agree with the Examiner’s finding (RAN 38)
that even if both ACCO and Royal/TTI did adopt the claimed invention in
their products, mere adoption by two companies is not a dispositive indicator
of praise and widespread adoption because in the present record, no
evidence has been provided as to the significance of these two manufacturers
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relative to the total shredder market, or that these two companies are
representative of the shredder manufacturing industry as a whole.
The Patent Owner further relies on passage of time after JP ’445 as
indicative of patentability, and argues that “[o]nly decades later, after Mr.
Matlin invented the claimed invention did the competition, including the
Requester itself, decide to adopt the claimed invention. See, e.g[.], Leo
Pharm. Prods. Ltd. v. Rea, 726 F.3d 1346, 1354 (Fed. Cir. 2013).” (Reb. Br.
11–12). However, as discussed supra, the evidence of record is inadequate
to establish that competitors adopted the claimed invention.
Moreover, while noting that “Leo Pharmaceutical discusses the
number of years that passed from the time the prior art was invented until
the filing of the patent at issue,” the Federal Circuit recently explained in
Nike, Inc. v. Adidas AG:
our reversal of the Patent Board’s obviousness determination [in
Leo Pharmaceutical] hinged on the fact that nothing in the cited
prior art appreciated the problem the invention recognized and
then solved. Id. at 1353 . . . . Because there was no prior
recognition of the problem solved by the subject invention, there
was no reason in the record why one of skill in the art would
attempt to combine the cited prior art to arrive at the claimed
invention. Id. at 1354 . . . ; see also id. at 1356–57 . . . .
In this way, our decision in Leo Pharmaceutical is entirely
consistent with established precedent that “[t]he mere age of the
references is not persuasive of the unobviousness of the
combination of their teachings, absent evidence that,
notwithstanding knowledge of the references, the art tried and
failed to solve the problem.” In re Wright, 569 F.2d 1124, 1127
(CCPA 1977); see also Iron Grip Barbell Co. v. USA Sports, Inc.,
392 F.3d 1317, 1325 (Fed.Cir.2004) . . . . Leo Pharmaceutical
recognizes the natural consequence of this idea: Persons of skill
in the art cannot have tried and failed to solve the problem if they
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were never aware of that problem to begin with. Thus, the
number of years that passed between the prior art and the claimed
invention may be a relevant factor to underscore that skilled
artisans had long failed to appreciate the problem solved by that
invention. Here, there is no question that skilled artisans knew of
the desire to reduce waste when producing wearable, knitted shoe
uppers because that problem is expressly recognized in Nishida.
Thus, Leo Pharmaceutical does not control the present case.
Nike, Inc. v. Adidas AG, 812 F.3d 1326, 1337–38 (Fed. Cir. 2016).
The facts of this appeal are unlike Leo Pharmaceutical, but instead,
are more like Nike, because those skilled in the shredder art knew of the
desire to reduce jamming of shredders caused by feeding of improperly thick
paper (see Spec. col. 1, ll. 36–39; Reb. Br. 5, citing Matlin Decl. ¶ 5; see
generally JP ’445; see also Matlin Decl. ¶¶ 9–13, 20; App. Br. 28–33 (the
Patent Owner arguing that jam free shredder was a long-felt need and
explaining various attempts by others to satisfy this need)). As such, Leo
Pharmaceutical is not controlling in the present case.
Nonetheless, the Federal Circuit noted that “it may be appropriate for
the Board to consider the passage of time” in connection with secondary
considerations evidence. Nike, Inc. v. Adidas AG, 812 F.3d at 1338 n.2. The
passage of time between JP ’445 and the claimed invention does not
materially impact our consideration of the secondary considerations
evidence discussed above relative to long-felt need and praise and adoption
by others.
Therefore, in view of the totality of facts and evidence of record in
this appeal, we affirm the Examiner’s rejection of independent claim 16.
Finally, as previously noted, the Patent Owner does not argue any of the
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dependent claims 17–22 separately. As such, dependent claims 17–22 fall
with independent claim 16.

CONCLUSION
The Examiner’s rejections of claims 16–22 are AFFIRMED.
Requests for extensions of time in this inter partes reexamination
proceeding are governed by 37 C.F.R. § 1.956. In the event neither party
files a request for rehearing within the time provided in 37 C.F.R. § 41.79,
and this decision becomes final and appealable under 37 C.F.R. § 41.81, a
party seeking judicial review must timely serve notice on the Director of the
United States Patent and Trademark Office. See 37 C.F.R. §§ 90.1 and
1.983.

AFFIRMED

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THIRD PARTY REQUESTER:

RICHARD L. KAISER
MICHAEL BEST & FRIEDRICH LLP
100 EAST WISCONSIN AVE., SUITE 3300
MILWAUKEE, WI 53202

PATENT OWNER:

PILLSBURY WINTHROP SHAW PITTMAN, LLP
PO BOX 10500
MCLEAN, VA 22102