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By Peter Leung
Feb. 22 — The Patent Trial and Appeal Board applied an incorrect standard for obviousness when it overturned the examiner's finding of invalidity, the Federal Circuit ruled on Feb. 22.
The case appears to be a reminder to the board that it needs to clearly lay out the reasoning for its decisions.
ACCO Brands Corp. had filed for inter partes reexamination for claims nine through 12 of U.S. Patent No. 7,963,468, which is owned by Fellowes, Inc., a competitor in the paper shredder business. The patent covers a shredder that uses a proximity sensor, a paper thickness sensor and a motor controller to prevent shredder jams.
On reexamination, the examiner ruled that all four claims in the patent were obvious in light of the prior art, including Japanese Patent No. 57–70445, which disclosed a shredder with a thickness sensor that shuts down power to the motor when it detects that there is too much paper. Other prior art disclosed shredders that used proximity sensors to turn the shredding motor on or off. Once the examiner made this prima facie finding for obviousness, Fellowes was given an opportunity to rebut, which the examiner found it failed to do.
The board reversed on appeal. It found that the examiner did not make its prima facie case because claims 9 and 11 disclosed an invention that was configured in a way that was not obvious to the ordinary artisan. While the prior art disclosed shredders that cut off the motor when they detected that the paper in the feeder was too thick, the patented invention turns on the shredder when it detects that paper was present but not too thick.
It also found that it did not need to rule on claims 10 and 12 because they were dependent on 9 and 11, nor did they address Fellowes' rebuttal argument.
The Federal Circuit reversed and remanded. It noted that the board's decision did not state whether the combination of the two sensors and the controller was obvious. However, the court found that since the prior art disclosed both proximity sensors and thickness sensors matched with a controller, it would have been obvious to configure a shredder that uses the sensors to turn the motor on per the patent, since an ordinary artisan understands that the user must have a way to turn the shredder on in the first place.
Furthermore, the court found that though Fellowes was right to point out that one of the prior art combinations fell outside the scope of the patent, there were other prior art combinations that were within the scope, thus making the examiner's prima facie case for obviousness.
Finding that the examiner correctly made its prima facie case for obviousness as to claims 9 and 11, the court remanded the case back to the board to determine whether the patent holder rebutted the examiner's prima facie finding, and to review the case as to claims 10 and 12.
Judges Pauline Newman, Raymond T. Chen and Todd M. Hughes heard the case, with Chen writing the decision. Steven R. Trybus of Jenner & Block LLP of Chicago represented ACCO, while Bryan Patrick Collins of Pillsbury Winthrop Shaw Pittman LLP in McLean, Virginia represented Fellowes.
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