  United States Court of Appeals
      for the Federal Circuit
                ______________________

          ACCO BRANDS CORPORATION,
                   Appellant

                           v.

                  FELLOWES, INC.,
                       Appellee
                ______________________

                      2015-1045
                ______________________

    Appeal from the United States Patent and Trademark
Office, Patent Trial and Appeal Board in No. 95/001,723.
                  ______________________

              Decided: February 22, 2016
               ______________________

   STEVEN R. TRYBUS, Jenner & Block LLP, Chicago, IL,
argued for appellant. Also represented by MICHAEL GLENN
BABBITT, PETER J. BRENNAN; RICHARD L. KAISER, Michael
Best & Friedrich LLP, Waukesha, WI.

    BRYAN PATRICK COLLINS, Pillsbury Winthrop Shaw
Pittman LLP, McLean, VA, argued for appellee. Also
represented by WILLIAM P. ATKINS, ROBERT M. FUHRER.
                ______________________

    Before NEWMAN, CHEN, and HUGHES, Circuit Judges.
CHEN, Circuit Judge.
2               ACCO BRANDS CORPORATION   v. FELLOWES, INC.



    This case arises from an inter partes reexamination
that ACCO Brands Corporation (ACCO) sought—and the
Patent and Trademark Office instituted—against a pa-
tent owned by Fellowes, Inc. (Fellowes). After the exam-
iner rejected four claims on obviousness grounds,
Fellowes appealed to the Patent Trial and Appeal Board
(Board). The Board reversed the rejections, finding that
the examiner had failed to make a prima facie showing of
obviousness. We reverse this finding and hold that the
examiner made this prima facie showing. We remand the
Board’s decision so it may further consider two issues that
it did not reach below: (1) whether Fellowes’ rebuttal
evidence changes the outcome on obviousness and (2)
whether the dependent claims at issue provide independ-
ent grounds of nonobviousness.
                      BACKGROUND
    ACCO and Fellowes compete in the paper shredder
business. Fellowes obtained U.S. Patent No. 7,963,468,
(the ’468 patent) claiming a shredder that prevents paper
jams using a combination of two sensors. One, a presence
sensor, detects whether paper is present in the shredder’s
feed. The other, a thickness sensor, detects whether the
stack of paper in the feed is thick enough to risk exceed-
ing the shredder’s capacity. The patent further claims a
controller that turns the shredder motor on only when (1)
the presence sensor indicates paper is present in the
shredder’s feed and (2) the thickness sensor detects that
the paper in the feed does not exceed the shredder’s
thickness capacity. Fellowes notes that this set of claim
elements results in a shredder that exhibits the desirable
behavior of starting only when a user feeds an appropri-
ate amount of paper into the shredder and not turning the
motor on when the user has exceeded the shredder’s
capacity. Independent claim 11 is representative for our
purposes:
ACCO BRANDS CORPORATION   v. FELLOWES, INC.           3



   A shredding machine for shredding sheet materi-
   al, the machine comprising:
       a feed-aperture;
       an electric cutting mechanism, the feed-
       aperture being configured to receive mul-
       tiple sheets and direct said sheets in a
       feeding direction towards the cutting
       mechanism for shredding;
       a controller coupled to the cutting mecha-
       nism;
       a thickness detector coupled to the control-
       ler, the thickness detector having a part
       extending into the feed-aperture and being
       moveable such that said part will be en-
       gaged by sheet material inserted in the
       feeding direction into the feed-aperture
       prior to reaching the cutting mechanism,
       and moved from a first position to a sec-
       ond position as a result of said engage-
       ment, if the sheet material exceeds a
       predetermined thickness;
       said controller being configured to, during
       insertion of the sheet material into the
       feed-aperture, permit energization of the
       cutting mechanism prior to the part of the
       thickness detector reaching the second po-
       sition and prevent energization of the cut-
       ting mechanism responsive to said part of
       the thickness detector reaching the second
       position; and
4               ACCO BRANDS CORPORATION    v. FELLOWES, INC.



        a maximum thickness indicator for provid-
        ing a visual or audible indication1 to a us-
        er of the machine that energization of the
        cutting mechanism is prevented due to the
        sheet material moving said part of the
        thickness detector to said second position;
        further comprising a presence sensor
        along the feed-aperture for detecting a
        presence of the sheet material inserted in-
        to the feed-aperture, the controller being
        coupled to the presence sensor and the
        maximum thickness indicator,
        wherein the controller is configured to
        start energization of the cutting mecha-
        nism only in response to the presence sen-
        sor detecting the presence of the sheet
        material inserted into the feed-aperture
        and the part of the thickness detector not
        having been moved to the second position
        by the sheet material;
        wherein the controller is configured to
        prevent the starting of energization of the
        cutting mechanism and also actuate the
        maximum thickness indicator to provide
        the visual or audible indication in re-
        sponse to the part of the thickness detec-
        tor moving to the second position.
’468 patent, claim 11.



    1   Fellowes does not contend before us that its
claimed “maximum thickness indicator for providing a
visual or audible indication” provides an independent
basis of nonobviousness. We thus do not consider this
limitation.
ACCO BRANDS CORPORATION   v. FELLOWES, INC.               5



    Both types of sensors as well as a controller that turns
the shredder motor on and off were known in the shredder
art. One prior-art reference, Japanese Patent No. 57-
70445 (JP ’445), 2, 3 discloses a shredder with a thickness
sensor. It explains that the shredder cuts power to the
motor when the thickness sensor detects that the user has
fed too much paper into the shredder. It also describes
the prior-art solution to jamming upon which its inven-
tion attempts to improve. Prior-art shredders, it explains,
contained jam-detection circuitry that monitors the cur-
rent to the shredder motor for a spike that would indicate
a jam has occurred. Upon detecting a jam, a shredder
with this circuitry cuts power to the motor, preventing
damage to the shredder’s mechanical components. JP
’445 explains that this prior-art jam-detection circuitry
suffers from a significant weakness: it does not shut down
the shredder’s motor until the paper jam has already
occurred. J.A. 1047. JP ’445’s system offered the distinct
advantage of avoiding paper jams by placing a thickness
sensor in the shredder’s feed. Whenever the thickness
sensor detects the user has inserted too much paper into
the feed, JP ’445’s thickness sensor transmits a signal to
disconnect the motor’s power. JP ’445 does not disclose a
presence sensor, or, for that matter, any other way to turn
on the shredder motor.




   2    The record before us contains an English transla-
tion of this patent, whose accuracy no party challenges.
See J.A. 1047–49. We rely on this English translation for
JP ’445’s contents.
    3   The applicant cited JP ’445 to the examiner dur-
ing the original prosecution of the application leading to
the ’468 patent.
6               ACCO BRANDS CORPORATION   v. FELLOWES, INC.



    A variety of references 4 show prior-art shredders with
presence sensors that turn the shredder motor on when a
user feeds paper into the shredder. J.A. 1094–168.
    Two of the references showing presence sensors also
disclose controllers to turn the motor on and off. J.A.
1102, 1113, 1118, 1125, 1152, 1159–60. These controllers
are connected to the presence sensor, and upon receiving
a signal from the presence sensor that paper is present,
they allow power to flow to the motor. These two refer-
ences also disclose jam-detection circuitry similar to that
described in JP ’445. J.A. 1097, 1100, 1101, 1153, 1160.
Upon receiving a signal from the jam-detection circuitry
indicating that a jam has occurred, the prior-art control-
lers cut power to the motor.
    Because the prior art contains both sensors in Fel-
lowes’ claims and a controller, Fellowes bases its position
that it invented something nonobvious on its particular
combination of these prior-art elements.
    The day that the ’468 Patent issued, Fellowes sued
ACCO for infringement. ACCO then requested—and the
Patent and Trademark Office granted—an inter partes
reexamination of the patent. The district court stayed
Fellowes’ infringement suit pending the outcome of this
reexamination.
    On reexamination, the examiner found a prima facie
case that independent claims 9 and 11 would have been
an obvious combination of the prior art thickness and
presence sensors and the prior art controller in a paper
shredder. He similarly found that claims 10 and 12,


    4  The references in our record including presence
sensors are GBC SHREDMASTER Models 2230S, 2250X
Paper Shredders Service Manual (1997); U.S. Patent No.
6,550,701; U.S. Patent No. 5,775,605; U.S. Patent No.
4,842,205; and U.S. Patent No. 3,724,766.
ACCO BRANDS CORPORATION   v. FELLOWES, INC.              7



which depend on claims 9 and 11, respectively, would
have been prima facie obvious based on these references
and an additional reference. Fellowes presented rebuttal
evidence, alleging a long-felt but unmet need. After
considering the rebuttal evidence, the examiner main-
tained the § 103 rejection of claims 9–12.
    Fellowes appealed to the Board. The Board agreed
with the examiner’s findings that the prior art contained
the claimed presence sensor, the claimed thickness sen-
sor, and a controller to turn the motor on and off. See
ACCO Brands Corp. v. Fellowes, Inc., No. 2013-010043,
2014 WL 492182, at *5, *7–11 (PTAB Feb. 6, 2014) (Board
Opinion). It focused, however, on the claims’ requirement
that the controller be configured to start the motor only
when the presence sensor detects paper is present and the
thickness sensor detects the paper stack is not too thick.
Id. The patent owner sees this requirement as central to
the patent’s inventive concept: the claimed shredder
improved upon the prior art, in the patent owner’s view,
because it would start the shredder only when all condi-
tions for successful shredding were satisfied rather than
starting the shredder and then stopping after detecting a
jam. The Board determined that, even if an ordinary
artisan might have found it obvious to combine the two
prior-art sensors and the prior-art controller, he would
not have found it obvious to configure this controller as
claimed. Id. at *14. It therefore found the examiner not
to have made out a prima facie case that independent
claims 9 and 11 would have been obvious. Id. at *14.
Based on this finding, it concluded that all four claims at
issue would have been nonobvious and that it did not
need to consider Fellowes’ rebuttal evidence or the exam-
iner’s additional evidence that dependent claims 10 and
12 would have been obvious. Id.
   After the Board denied ACCO’s request for rehearing,
ACCO appealed to us.
8                ACCO BRANDS CORPORATION    v. FELLOWES, INC.



                          ANALYSIS
    We have jurisdiction over final determinations of the
Board under 35 U.S.C. § 141(b) and 28 U.S.C.
§ 1295(a)(4)(A). We review the Board’s legal conclusions
de novo and its factual findings under a substantial-
evidence standard. Q.I. Press Controls, B.V. v. Lee, 752
F.3d 1371, 1378–79 (Fed. Cir. 2014).
     A claim is unpatentable “if the differences between
the claimed invention and the prior art are such that the
claimed invention as a whole would have been obvious at
the time the invention was made to a person having
ordinary skill in the art . . .” 35 U.S.C. § 103 (2006); 5 see
also KSR Int’l Co. v. Teleflex Inc., 550 U.S. 398, 406
(2007). During patent examination and reexamination,
the concept of prima facie obviousness establishes the
framework for the obviousness determination and the
burdens the parties face. See Kennametal, Inc. v. Inger-
soll Cutting Tool Co., 780 F.3d 1376, 1384 (Fed. Cir.
2015). Under this framework, the patent examiner must
first set forth a prima facie case, supported by evidence,
showing why the claims at issue would have been obvious
in light of the prior art. In re Sullivan, 498 F.3d 1345,
1351 (Fed. Cir. 2007). Once the examiner sets out this
prima facie case, the burden shifts to the patentee to
provide evidence, in the prior art or beyond it, or argu-
ment sufficient to rebut the examiner’s evidence. Id. The
examiner then reaches the final determination on obvi-
ousness by weighing the evidence establishing the prima


    5   Congress amended § 103 in the 2011 America In-
vents Act to account for the act’s first-inventor-to-file
scheme. Given the effective filing date of the patent’s
claims, we apply the version of § 103 preceding the Amer-
ica Invents Act’s changes. See Leahy-Smith America
Invents Act, Pub. L. No. 112–29, § 3(n)(1), 125 Stat. 284,
293 (2011).
ACCO BRANDS CORPORATION   v. FELLOWES, INC.               9



facie case with the rebuttal evidence. See Leo Pharm.
Prods. v. Rea, 726 F.3d 1346, 1357 (Fed. Cir. 2013)
(“[C]onsideration of the objective indicia is part of the
whole obviousness analysis, not just an after-thought.”)
(emphasis omitted). If this weighing shows obviousness
by a preponderance of the evidence, then the claims at
issue were unpatentable. Rambus Inc. v. Rea, 731 F.3d
1248, 1255 (Fed. Cir. 2013).
    As Fellowes concedes before us, the Board correctly
found that prior-art shredders contained the claimed
presence sensor, the claimed thickness sensor, and a
controller to turn the motor on and off. See Board Opin-
ion at *5–11.
    It is unclear from the Board opinion whether the
Board would find that it would have been obvious to
combine the prior-art presence and thickness sensors and
the prior-art controller in a single shredder. Regardless,
such a combination would have been obvious for two
independent reasons.
    First, an ordinary artisan would have found motiva-
tion to modify the shredder with the thickness sensor
disclosed in JP ’445 to add a presence sensor and control-
ler. JP ’445 does not explicitly disclose any way to turn on
the shredder motor, explaining only that its invention
involves cutting power to the motor when the thickness
sensor detects that too much paper has been fed into the
shredder. An ordinary artisan would understand that in
order for this shredder to function, the user must have
some way to turn the shredder motor on in the first place.
The prior art discloses presence sensors and controllers as
a common way to turn a shredder motor on. The ordinary
artisan would therefore find motivation to modify the
invention JP ’445 discloses to include this well-known
means to turn the shredder motor on. See KSR Int’l Co.,
550 U.S. at 416 (“The combination of familiar elements
10              ACCO BRANDS CORPORATION   v. FELLOWES, INC.



according to known methods is likely to be obvious when
it does no more than yield predictable results.”).
    Second—and alternatively—an ordinary artisan
would have been motivated to modify a prior-art shredder
containing a presence sensor and controller to add a
thickness sensor. The Board correctly found that “the
problem of shredder jamming was known as of the filing
date of the ’445 patent.” Board Opinion at *4. The inclu-
sion of jam-detection circuitry—an imperfect attempt to
solve this same problem—in other prior art shredders
further supports this conclusion that the problem was
known in the art. This problem would have motivated an
ordinary artisan to add a thickness sensor, a solution
known in the art, to a shredder, including known shred-
ders, containing a presence sensor and controller. See
KSR Int’l Co., 550 U.S. at 419–20 (“One of the ways in
which a patent’s subject matter can be proved obvious
is by noting that there existed at the time of invention a
known problem for which there was an obvious solution
encompassed by the patent’s claims.”).
    Under either of these scenarios, a skilled artisan
would have been motivated to connect the prior-art pres-
ence sensor and thickness sensor to the prior-art control-
ler as inputs it would use to determine whether to turn on
the shredder motor. Prior-art shredders connected this
controller to the presence sensor and to the jam-detection
circuitry. In the obvious combinations discussed above,
the thickness sensor replaces the jam-detection circuitry
as the means to prevent shredder jamming. The examin-
er thus 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 thickness
sensor.
   Rather than finding that it would have been nonobvi-
ous to combine the prior-art sensors and controller, the
Board found that an ordinary artisan would not have
ACCO BRANDS CORPORATION    v. FELLOWES, INC.              11



found it obvious to configure the controller as claimed: to
turn the motor on only when the presence sensor detects
paper is present and the thickness sensor detects that the
paper stack is not too thick. Board Opinion at *14.
Substantial evidence does not support this finding; to the
contrary, the evidence compels the opposite conclusion.
    The prior art consistently locates the two sensors at
issue in the shredder’s feed, and no party disputes that an
ordinary artisan would have found this the obvious loca-
tion for the combination of sensors. The ordinary artisan
would then be left with two design choices: he could place
the thickness sensor either above the presence sensor in
the feed, so that the paper contacts the thickness sensor
before the presence sensor, or below so that the paper
contacts it after. Each of these two design choices is an
obvious combination of prior-art elements. See KSR Int’l
Co., 550 U.S. at 421 (“When there is a design need or
market pressure to solve a problem and there are a finite
number of identified, predictable solutions, a person of
ordinary skill has good reason to pursue the known op-
tions within his or her technical grasp. If this leads to the
anticipated success, it is likely the product not of innova-
tion but of ordinary skill and common sense.”). The first
choice, with the thickness sensor above the presence
sensor in the feed, necessarily satisfies the claim limita-
tions. In this configuration, the paper would first contact
the thickness sensor, and the controller would prevent
power from flowing to the motor if the user has inserted
too much paper. Then, the paper would contact the
presence sensor, and, assuming the thickness sensor did
not indicate that the paper was too thick, the controller
would turn the motor on. The motor would therefore turn
on only when the thickness sensor detects that the paper
is not too thick and the presence sensor detects that the
paper is present, and it will be off in all other circum-
stances. Fellowes’ counsel acknowledged at oral argu-
ment that this particular configuration meets the
12              ACCO BRANDS CORPORATION   v. FELLOWES, INC.



limitations of its independent claims. Oral Argument at
22:48–23:50, ACCO Brands Corp. v. Fellowes, Inc., No.
2015-1045 (Fed. Cir., Sept. 8, 2015, available at
http://oralarguments.cafc.uscourts.gov/default.aspx?fl=20
15-1045.mp3). Fellowes correctly notes that the other
configuration of the two sensors—where the presence
sensor is above the thickness sensor—would result in
slightly different shredder behavior. Were a user to feed
too much paper into that shredder, the controller would
briefly turn the motor on as the paper passes by the
presence sensor and then turn it off as the too-thick paper
stack passes by the thickness sensor. 6 Fellowes asserts
that this behavior falls outside of the claims’ scope. But
even if one possible obvious combination falls outside of
the claims, it fails to undercut the fact that the other
possible obvious combination lies within their scope. The
examiner therefore successfully set out a prima facie case
that claims 9 and 11 would have been obvious. 7
                       CONCLUSION
    We reverse the Board’s determination that the exam-
iner did not set forth a prima facie case of obviousness.
Based on the Board’s finding of no prima facie case as to
claims 9 and 11, it appropriately declined to reach (1) the
examiner’s prima facie evidence that claims 10 and 12 are
obvious and (2) Fellowes’ rebuttal evidence. We decline to
take either category of evidence up for the first time on
appeal and instead remand this case to the Board so that
it may consider these two issues.


     6   One might conceivably modify the prior-art con-
troller to eliminate this behavior, but there was no evi-
dence in the record about the obviousness of such a
modification.
    7    Fellowes makes no additional arguments against
the examiner’s prima facie case beyond those on which
the Board relied.
ACCO BRANDS CORPORATION   v. FELLOWES, INC.   13



           REVERSED AND REMANDED
   No costs.
