Sensor and Controller Combination Declared (Prima Facie) Obviously Not Patentable

Appeals Court reverses the USPTO Patent Trial and Appeals Board (PTAB) and holds that a Patent Examiner had correctly found that a combination of two sensors and a controller to prevent a shredder’s paper jam was an “obvious” and hence not patentable and further that the Examiner made a prima facie showing of obviousness on the issue of patentability. In Acco Brands Corporation v. Fellowes, Inc., 2015-1045 (Fed. Cir. February 22, 2016) (Available Here), the Court of Appeals for the Federal Circuit (the “Federal Circuit”) reversed a PTAB’s decision and held that the Examiner had made a prima facie showing of obviousness. The combination of known prior art elements (two sensors and a controller) was obvious to arrive at a shredder that prevented paper jams.  Once an invention is held to be obvious under the Patent Act, the invention is not patentable.

The subject patent, U.S. Patent No. 7,963,468 (the ‘468 patent) claims a shredder that prevents paper jams using a combination of two sensors.  One sensor that detects the presence of paper and the other sensor detects the thickness of the paper.  The ‘468 patent further claims a controller that only turns ON the shredder when the “paper present” sensor senses paper and the “paper thickness” sensor senses that the thickness does not exceed the shredder’s capacity.

Acco Brands Corporation (“Acco”) filed an inter partes reexamination proceeding against patentee Fellowes, Inc. (“Fellowes”), after Fellowes filed suit against Acco the day the ‘468 patent issued.  The Reexam Examiner rejected four patent claims on obviousness grounds and Fellowes appealed to the PTAB. The PTAB reversed the Examiner’s rejections, finding that the Examiner had failed to make a prima facie showing of obviousness.  The Federal Circuit then reversed the PTAB and held that the Examiner had made a prima facie showing of obviousness.  

The Federal Circuit remanded the matter to the PTAB to decide (1) whether Fellowes’ rebuttal evidence changes the outcome on obviousness and (2) whether the dependent claims at issue provide independent grounds of nonobviousness.

Both types of sensors and the controller were well known in the art.  Fellowes argued that it invented something nonobvious and arguably patentable based on its particular combination of the prior-art elements. The PTAB sided with Fellowes and found that it would not have been obvious to configure the controller as claimed.  The claimed invention improved upon the prior art because it would start the shredder only when all conditions for successful shredding were satisfied rather than starting the shredder and then stopping it after detecting a jam.  

The Federal Circuit reversed the PTAB finding that the combination was obvious for two reasons.  First, a person of ordinary skill in the art (an ordinary artisan) would have been motivated to modify the shredder with the paper thickness sensor as disclosed in prior art references and to add a paper present sensor and controller.  

Secondly, as an alternative ground, an ordinary artisan would have been motivated to modify a prior-art shredder, which contained a paper present sensor and controller, and add to that prior art device a paper thickness sensor.  

The Federal Circuit found that the Examiner properly found that it would have been prima facie obvious to replace the controller input from the jam detection circuitry with an input from the paper thickness sensor.

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