Ex Parte Castronovo

Board of Patent Appeals and Interferences

Mar 14, 2012

11740651 (B.P.A.I. Mar. 14, 2012)

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.
11/740,651 04/26/2007 Charles A. Castronovo 07030002C2 1572
7590 03/14/2012
Whitham, Curtis & Christofferson, PC
Suite 340
11491 Sunset Hills Road
Reston, VA 20190
EXAMINER
ROSENBAUM, MARK
ART UNIT PAPER NUMBER
3725
MAIL DATE DELIVERY MODE
03/14/2012 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 BOARD OF PATENT APPEALS
AND INTERFERENCES
____________

Ex parte CHARLES A. CASTRONOVO
____________

Appeal 2009-015421
Application 11/740,651
Technology Center 3700
____________

Before JENNIFER D. BAHR, LINDA E. HORNER, and
STEFAN STAICOVICI, Administrative Patent Judges.

STAICOVICI, Administrative Patent Judge.

DECISION ON APPEAL

Appeal 2009-015421
Application 11/740,651

2
STATEMENT OF THE CASE
Charles A. Castronovo (Appellant) appeals under 35 U.S.C. § 134
from the Examiner’s decision to reject under 35 U.S.C. § 102(b) claims 23,
25-29, 31, 35, 37, 41 and 43 as anticipated by Jang (US 5,340,034, iss. Aug.
23, 1994), and claims 23, 25-28, 31, 35, 41 and 43 as anticipated by Swallert
(US 3,589,276, iss. Jun. 29, 1971); and under 35 U.S.C. § 103(a) claims 39
and 42 as unpatentable over Jang. Appellant presents additional evidence in
the Declaration of Charles A. Castronovo1,2 under 37 C.F.R. § 1.132 filed
February 27, 2008. Claims 1-22, 24, 30, 32-34, 36, 38 and 40 have been
canceled. We have jurisdiction over this appeal under 35 U.S.C. § 6.
We AFFIRM.

THE INVENTION
Appellant’s invention relates to methods of reducing material to an
unrecoverable fiber or powder form. Spec. 1, ll. 10-12 and fig. 1.
Claim 23 is illustrative of the claimed invention and reads as follows:
23. A method of high-security destruction of an input,
consisting essentially of:
operating a disintegrator machine, no screen being
included in the disintegrator machine, to entirely reduce
the input into high-security residue.

1 Hereafter the “Castronovo Decl.”
2 The Declarant, Mr. Charles A. Castronovo, is also the inventor in the
instant application. On the basis of the credentials set forth in the Castronovo
Declaration, the Castronovo Declaration does not establish that the
Declarant is an expert in the field of information security. See Castronovo
Decl. ¶¶ 1 and 3.
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Application 11/740,651
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OPINION
The anticipation rejection based on Jang
Claims 23, 25-29, 31, 35, 37, 41
Appellant argues the rejection of independent claims 23, 25, 27 and
41 under 35 U.S.C. § 102(b) as anticipated by Jang on the same basis. See
App. Br. 12 and 17. As such, the following analysis applies equally to
independent claims 23, 25, 27 and 41.
Appellant argues that Jang fails to teach a “method of high-security
destruction of an input,” as required by claim 23, which is a method “to
entirely reduce the input into high-security residue.” App. Br. 12. In other
words, Appellant argues that Jang’s paper grinder does not reduce the entire
amount into high-security residue.3 See App. Br. 12-16. See also Reply Br.
1-3; Castronovo Decl., ¶ 5. Appellant notes that since Jang’s paper grinder
functions at slow speeds (1500 revolutions per minute)4 against flimsy
paper, “some significant portion of the paper will tend to just bend over
unless supported during cutting action,” and as such, will not be destroyed.
App. Br. 12. Taking into consideration that Jang’s corrugating rollers are
approximately ¾ inch in diameter at their widest points (Jang, col. 3, l. 6)
and scaling Figure 2 of Jang,5 Appellant concludes that a gap of 0.47 inches
exists between the pinch-point of the rolls and the tip of the grinding teeth,
such that “it is a physical impossibility for the end-of-page to be destroyed to
high-security residue by Jang’s structure.” App. Br. 13. In Appellant’s
view, the output of a sheet of paper that is run through Jang’s paper grinding

3 Only independent claims 23 and 41 require reduction of input into high-
security residue.
4 Jang, col. 4, ll. 12-13. Appellant calculates the peripheral cutter speed of
Jang, by scaling the Figures, to be 12 mph. App. Br. 12, n. [16].
5 See App. Br. 13, n. [18].
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device (1) “necessarily will contain the end-of-page too-big pieces and
necessarily will fail high-security specifications” and (2) will contain bigger
than powder pieces, which can fly away. App. Br. 13, 15-16. See also Reply
Br. 3 and Castronovo Decl., ¶ 5. Appellant also posits that there is nothing
that compels any of the bigger than powder pieces to undergo further
reduction. App. Br. 15-16. As such, Appellant concludes that Jang “makes
no affirmative provision to guarantee that only high-security residue escapes
to the bin.” App. Br. 16. We are not persuaded by Appellant’s arguments.
We begin our analysis by construing the phrase “high-security
residue.” Claims are to be given their broadest reasonable interpretation
consistent with the specification. In re Am. Acad. of Sci. Tech Ctr., 367 F.3d
1359, 1364 (Fed. Cir. 2004). At the outset, although Appellant’s
Specification does not explicitly define the phrase “high-security residue,”6
the Castronovo Declaration states that, “’High security’ in the context of a
destruction machine means that its residue meets NSA-issued
specifications.” Castronovo Decl., ¶ 3. However, since the Castronovo
Declaration does not establish that the Declarant is an expert in the field of
information security (see supra, n. [2]), we do not construe the phrase “high-
security residue” to include the requirements of NSA-issued specifications.
Nonetheless, Appellant’s Specification does disclose that (1) the apparatus
of Figures 1 or 3 can be used to destroy paper, polyester or other types of
products to provide an output of high security material, most preferably a
powder of finely grained material of a granular size, such that the data

6 The Appeal Brief states that “NSA’s high-security standards for paper
destruction require particles to meet both conditions of the particle being no
larger than 5 square mm in area, and no edge exceeding 5 mm (.196").”
App. Br. 16, n. [19].
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previously recorded in or on the disintegrated product will be information-
unrecoverable. Spec. 29, ll. 13-16. Thus, the phrase “high-security
residue,” as applied to paper and non-paper products, means an output
(residue) that is composed of a powder/dust of finely grained material of
such granular size that the data previously recorded in or on the disintegrated
product will be information-unrecoverable (i.e., high security).
We agree with the Examiner that Jang teaches a screenless high
security disintegrator of paper-like material into powder. Ans. 3, 6. We
further agree that Jang teaches that paper grinder 10 “‘absolutely obliterates
the content of documents such that they could never be even partially
reassembled.’” Ans. 6 citing Jang, col. 1, ll. 49-52. Because Jang’s paper
grinder forms paper powder and absolutely obliterates the contents of
documents, we find that residue from Jang’s paper grinder constitutes “high-
security residue.” Thus, Jang teaches a method of high-security destruction
of an input.
Jang specifically teaches that paper grinder 10 “directly forms paper
powder without the necessity of intermediate steps.” Jang, col. 1, ll. 47-49
(emphasis added). Because Jang’s paper grinder forms paper powder in one
step, we do not agree with Appellant that Jang’s paper grinder passes
through paper pieces larger than powder size. Jang’s disclosure that it
absolutely obliterates the contents of documents such that they could never
be even partially reassembled indicates that Jang’s paper grinder reduces the
entire input into high-security residue, as called for by independent claim 23.
Jang’s figures are not drawn to scale and Jang does not specify any
dimensions for the cutter/grinding teeth 80, 82. Accordingly, the Figures of
Jang cannot be relied upon to establish the precise value of the peripheral
cutting tooth speed of the cutting teeth 80, 82 (contra App. Br. 12, n. [16])
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or the gap between the corrugating rolls 44, 46 and the tip of the
cutter/grinding teeth 80, 82 (contra App. Br. 13, n. [18]). See Hockerson-
Halbertstadt, Inc. v. Avia Group Int’l, Inc., 222 F.3d 951, 956 (Fed. Cir.
2000).
Lastly, Appellant argues that the disclosure of Jang is not enabling
because it is not clear that Jang teaches “a method of high-security
destruction, i.e., to NSA-2002 specifications,” such that “only high-security
residue remains of the input.” App. Br. 17. Appellant argues that the terms
“high-security destruction” and “high security residue” should be construed
to include the requirements of NSA-2002. See also Reply Br. 1 and 3.
However, independent claim 23 does not require any specifications of NSA-
2002. Although the claims are interpreted in light of the Specification,
limitations from the Specification are not read into the claims. SuperGuide
Corp. v. DirecTV Enters., Inc., 358 F.3d 870, 875 (Fed. Cir. 2004).
For the foregoing reasons, we sustain the rejection of independent
claims 23, 25, 27 and 41 as anticipated by Jang. Appellant does not
separately argue dependent claims 26, 28, 29, 31, 35 and 37. App. Br. 17.
As such, we also sustain the rejection of these claims as anticipated by Jang.

Claim 43
Appellant argues that Jang fails to teach the method step of operating
the cutting machine on a mixed input of paper and non-paper, as required by
dependent claim 43. App. Br. 17. In response, the Examiner states that
paper and non-paper “can be any material whatsoever.” Ans. 6.
Jang teaches a paper grinder, wherein “the term ‘paper’ includes such
related paper-type products as paperboard, cardboard and the like which are
generally in the form of planar sheets.” Jang, col. 1, ll. 9-12. We do not find,
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Application 11/740,651
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nor has the Examiner pointed to, any portion in Jang that teaches operating
the paper grinder on non-paper items. Therefore, the rejection of claim 43 as
anticipated by Jang cannot be sustained.

The anticipation rejection based on Swallert
Appellant argues the rejection of independent claims 23, 25, 27 and
41 under 35 U.S.C. § 102(b) as anticipated by Swallert on the same basis.
See App. Br. 17. As such, the following analysis applies equally to
independent claims 23, 25, 27 and 41.
Appellant argues that Swallert fails to teach a method of high-security
destruction of input, as required by claim 23. App. Br. 17. Appellant argues
that Swallert’s grinding device (1) would be incapable of destroying an input
material into “high security residue” and (2) does not to guarantee entire
destruction of material to high-security standards. App. Br. 17; Reply Br. 3-
4. Appellant argues that Swallert is not concerned with reducing the input
into high-security pieces, because Swallert discloses that the input is
recombined to form briquettes. App. Br. 18. We are not persuaded by
Appellant’s arguments.
Attorney argument, such as the incapability of Swallert’s grinding
device to completely destroy an input material into high-security residue,
cannot take the place of evidence. Estee Lauder, Inc. v. L’Oreal, S.A., 129
F.3d 588, 595 (Fed. Cir. 1997). We do not find, and Appellant has not
pointed to, a teaching in Swallert which would have led a person of ordinary
skill in the art to conclude that all of the input material of Swallert would not
be turned into powder. Likewise, Appellant has not shown that Swallert’s
grinding device (1) is incapable of destroying an input material into high
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Application 11/740,651
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security residue; and (2) does not entirely destroy the input material to high-
security standards.
We agree with the Examiner that Swallert teaches a screenless high
security disintegrator of paper and non-paper material (i.e., glass, plastic and
metal) into powder. Ans. 3 and 7. See Swallert, Abst. Because Swallert
teaches disintegration of paper and non-paper material into powder, Swallert
teaches a method of high-security destruction, wherein the output (residue)
is composed of a powder/dust of finely grained material of a granular size,
such that the data previously recorded in or on the disintegrated paper
product is information-unrecoverable (i.e., high security residue). We also
agree with the Examiner that the formation of briquettes in Swallert “is
simply a manner in which the material may be handled subsequent to
disintegration and has nothing to do with whether or not the material is
completely turned into a powder.” Ans. 7.
For the foregoing reasons, we sustain the rejection of independent
claims 23, 25, 27 and 41 as anticipated by Swallert. Appellant does not
separately argue dependent claims 26, 28, 31, 35, 37 and 43. App. Br. 17-
18. As such, we also sustain the rejection of these claims as anticipated by
Swallert.

The obviousness rejection over Jang
With respect to dependent claims 39 and 42, the Examiner found that
“it would have been obvious for one of ordinary skill in the art to modify the
weight of Jang’s paper grinder “for obvious reasons such as movement
capabilities and maintenance requirements.” Ans. 4. Appellant argues that
it would not have been obvious for a person of ordinary skill in the art to
design a “high-security destruction method of operating a machine having
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‘no screen’ and that is as light as ‘about 80 lbs.’.” App. Br. 19. Appellant
has not identified any errors in the Examiner’s reasoning. Accordingly, we
sustain the rejection of claims 39 and 42.

DECISION
The Examiner’s decision to reject claims 23, 25-29, 31, 35, 37, 39 and
41-43 is affirmed.
No time period for taking any subsequent action in connection with
this appeal may be extended under 37 C.F.R. § 1.136 (a). See 37 C.F.R.
§ 1.136 (a)(1)(iv).

AFFIRMED

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