Appeal No. 2006-3218
Application No. 10/233,845
invention from the isolated teachings of the prior art. See, e.g., Grain Processing Corp. v.
American Maize-Prods. Co., 840 F.2d 902, 907, 5 USPQ2d 1788, 1792 (Fed. Cir. 1988).
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. 1992). “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 16.
From our review of the Examiner’s rejection and the recited claim limitations, we
agree with the Examiner that the AAPA teaches the oscillator and a toner capacitor with
both electrodes inside the cartridge. We note that the AAPA, page 3, lines 4-5, states that
the oscillator generates an oscillating signal, whose frequency is dependent on the toner
capacitance.
We further agree with the Examiner that both Miyashiro and Yasumasa teach a
toner capacitor with one capacitor electrode inside or mounted to the toner cartridge and
one electrode outside the toner cartridge. We find that electrode affixed to the outer
surface of the toner cartridge is outside of the toner cartridge. Therefore, we find that the
either of these two references in combination with the AAPA teach all of the limitations
of independent claim 16. The Examiner maintains that Miyashiro provides a motivation
for having one capacitor electrode on the inside of the toner cartridge and one capacitor
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