Ex Parte 7,963,468 et al

Patent Trial and Appeal Board

Feb 6, 2014

95001723 (P.T.A.B. Feb. 6, 2014)

UNITED STATES PATENT AND TRADEMARKOFFICE
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.
95/001,723 09/02/2011 7,963,468 015849-9113 3174
909 7590 07/18/2014
Pillsbury Winthrop Shaw Pittman, LLP (NV)
PO Box 10500
McLean, VA 22102
EXAMINER
DEMILLE, DANTON D
ART UNIT PAPER NUMBER
3993
MAIL DATE DELIVERY MODE
07/18/2014 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
Respondent, Requester
v.
FELLOWES, INC.
Appellant, Patent Owner
________________

Appeal 2013-010043
Reexamination Control 95/001,723
Patent No. US 7,963,468 B2
1

Technology Center 3900
________________

Before STEVEN D.A. McCARTHY, DANIEL S. SONG and
RAE LYNN P. GUEST, Administrative Patent Judges.

McCARTHY, Administrative Patent Judge.

DECISION ON REQUEST FOR REHEARING

In a “Decision on Appeal,” mailed February 7, 2014 (Decision”), we 1
reversed the Examiner’s decision adopting grounds of rejection 1-6 against 2
claims 9-12 under 35 U.S.C. § 103(a) (2011). The3

1
Issued June 21, 2011 to Tai Hoon K. Matlin and Eric Gach (the “′468
patent”). The ′468 patent issued from Appl. No. 12/616,567, filed
November 11, 2009.
Appeal 2013-010043
Reexamination Control 95/001,723
Patent No. US 7,963,468 B2

2
Requester seeks rehearing of this decision. (“Respondent/Third Party 1
Requester Request for Rehearing under 37 C.F.R. § 41.79,” dated 2
March 7, 2014 (“Rehearing Request” or “Reh’g Req.”)). The Patent Owner 3
has responded. (“Patent Owner’s Opposition to Request for Rehearing,” 4
dated March 14, 2014). 5
Requests for rehearing are limited to matters overlooked or 6
misapprehended by the Board in rendering the original decision. See 7
37 C.F.R. § 41.79(b)(1) (2011). We grant the request for rehearing to the 8
extent that we have considered the three points listed on page 2 of the 9
Rehearing Request but otherwise deny the request. 10
We begin from the principle of law that a party taking a position 11
adverse to the patentability of a claim generally bears the burden of proving 12
a factual underpinning for a rejection of the claim by preponderance of the 13
evidence. See Rambus Inc. v. Rea, 731 F.3d 1248, 1255 (Fed Cir. 2013). As 14
to the first point raised in the Rehearing Request, we find as fact that neither 15
the Examiner nor the Requester has proven by preponderance of the 16
evidence that placing the thickness detector upstream of the presence sensor, 17
regardless how close, necessarily would have resulted in preventing the start 18
of energization of a cutting mechanism of a shredder in response to a part of 19
the thickness detector moving to a second position. As a consequence, 20
neither the Examiner nor the Requester has proven the subject matter of 21
claim 9 as a whole would have flowed naturally from, or would have been 22
suggested by, merely combining a threshold detector and a presence sensor 23
in the feed-aperture of a shredder for the purpose of obtaining the known 24
function of a threshold detector and the known function of a presence 25
detector. 26
Appeal 2013-010043
Reexamination Control 95/001,723
Patent No. US 7,963,468 B2

3
As to the second point, we find as fact that Yoshida
2
did not teach 1
preventing the start of energization of a cutting mechanism of a shredder in 2
response to a part of the thickness detector moving to a second position. 3
(FF
3
11 and 14). Teaching the use of a thickness detector to stop an 4
energized motor is not the same as teaching that the energization of the 5
cutting mechanism should be prevented. Neither the Requester nor the 6
Examiner has provided persuasive reasoning to demonstrate that Yoshida 7
would have suggested the latter to one of ordinary skill in the art. 8
As to the third point, we find as fact that neither the Examiner nor the 9
Requester has proven by preponderance of the evidence that one of ordinary 10
skill in the art would have known, as a matter of common sense or 11
otherwise, that a threshold detector upstream of a presence sensor should 12
have been used to prevent the starting of energization of the cutting 13
mechanism in response to the part of the thickness detector moving to the 14
second position. (See, e.g., FF 4; see also FF 11, 14, 20, 23, 28, 33 and 36). 15
Therefore, neither the Examiner nor the Requester has proven that it would 16
have been a matter of common sense to configure a controller in a shredder 17
to start energization of [a] cutting mechanism [of 18
the shredder] only in response to the presence 19
sensor detecting the presence of . . . sheet material 20
inserted into [a] feed-aperture [of the shredder] and 21

2
Yoshida (JP H09-38513A, publ. Feb. 10, 1997). References to
“Yoshida” will be to an English-language translation prepared by Asian
Technical Translation Pty Ltd. The translation was filed in Appendix C to
the Request and is of record in this proceeding. Yoshida was referred to as
“JP ′513” in the Request.

3
The acronym “FF” refers to Findings of Fact listed on pages 8-21 of
the Decision.
Appeal 2013-010043
Reexamination Control 95/001,723
Patent No. US 7,963,468 B2

4
[a] part of the thickness detector not having been 1
moved to [a] second position by the sheet material; 2
[and] . . . 3
to prevent the starting of energization of the 4
cutting mechanism . . . in response to the part of 5
the thickness detector moving to the second 6
position 7
as recited in claim 9. 8
9
DECISION 10
We grant the request for rehearing to the extent that we have 11
considered the three points listed on page 2 of the Rehearing Request but 12
otherwise deny the request. 13
Requests for extensions of time in this inter partes reexamination 14
proceeding are governed by 37 C.F.R. § 1.956 (2011). 15
A party seeking judicial review of a final decision of the Board must 16
timely serve notice on the Director of the United States Patent and 17
Trademark Office. See 37 C.F.R. § 1.983 (2011) and 37 C.F.R. § 90.1 18
(2011). 19
20
DENIED 21

ak

Appeal 2013-010043
Reexamination Control 95/001,723
Patent No. US 7,963,468 B2

5
Patent Owner:

PILLSBURY WINTHROP SHAW
PITTMAN, LLP (NV)
P.O. Box 10500
McLean, VA 22102

Third Party Requester:

MICHAEL BEST & FRIEDRICH LLP
100 EAST WISCONSON AVENUE
SUITE 3300
MILWAUKEE, WI 53202