It is generally obvious to try any of a finite number of arrangements of prior art elements even if a subset of those arrangements fall outside of the claim scope at issue. Here, for example, the fact that there were only two feasible arrangements of two sensors within a paper shredder was found to be sufficient motivation to find the claimed arrangement obvious even though the equally plausible alternative arrangement fell outside of the claim scope. “[E]ven 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.” This would be a good case to consult before responding to an assertion of obviousness predicated on an “obvious to try” rationale.
Background / Facts: The patent on appeal here from IPR proceedings at the PTO is directed to 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 exceeding the shredder’s capacity. It is undisputed that both types of sensors as well as a controller that turns the shredder motor on and off were known in the shredder art.
Issue(s): Whether it would have been obvious to combine the two known sensors in a manner that not only performs each function separately, but also utilizes the sensors in combination to turn 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.
Holding(s): Yes. “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 location 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. [] The first choice, with the thickness sensor above the presence sensor in the feed, necessarily satisfies the claim limitations. … [E]ven 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.”