Appeal No. 2006-3105
Application No. 09/397,494
When determining obviousness, “the [E]xaminer can satisfy the burden of
showing obviousness of the combination ‘only by showing some objective teaching in the
prior art or that knowledge generally available to one of ordinary skill in the art would
lead that individual to combine the relevant teachings of the references.’” In re Lee, 277
F.3d 1338, 1343, 61 USPQ2d 1430, 1434 (Fed. Cir. 2002), citing In re Fritch, 972 F.2d
1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 992). “Broad conclusory statements
regarding the teaching of multiple references, standing alone, are not ‘evidence.’” In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir. 1999). “Mere denials
and conclusory statements, however, are not sufficient to establish a genuine issue of
material fact.” Dembiczak, 175 F.3d at 999-1000, 50 USPQ2d at 1617, citing
McElmurry v. Arkansas Power & Light Co., 995 F.2d 1576, 1578, 27 USPQ2d 1129,
1131 (Fed. Cir. 1993).
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d 1362,
1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the limitations as
recited in independent claim 26. From our review of the Examiner’s rejection, we find
that the teachings of Layne alone would have been sufficient to suggest the invention as
recited in independent claim 26. While the Examiner relies upon the teachings of
Dehlinger to teach that the probe is part of a probe array, we find that the Examiner is
interpreting the probe array too specifically. We find no limitation beyond the scope
taught by Layne which teaches an array of probes. We agree with the Examiner that
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