Ex Parte Tullis et al

Board of Patent Appeals and Interferences

Nov 30, 2006

10233845 (B.P.A.I. Nov. 30, 2006)

The opinion in support of the decision being entered today was not written
for publication in and is not binding precedent of the Board.

UNITED STATES PATENT AND TRADEMARK OFFICE
___________

BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
___________

Ex parte Barclay J. Tullis,
Carl Picciotto, and Jun Gao
___________

Appeal No. 2006-3218
Application No. 10/233,845
Technology Center 2800
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ON BRIEF
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Before KRASS, DIXON, AND HOMERE, Administrative Patent Judges.
DIXON, Administrative Patent Judge.

DECISION ON APPEAL

This is a decision on appeal under 35 U.S.C. §134 from the Examiner's final
rejection of claims 16-19 and 21-35, which are all of the claims pending in this
application. Claims 1-15 and 20 have been canceled.
We AFFIRM.
Appeal No. 2006-3218
Application No. 10/233,845

BACKGROUND
The Appellants’ invention relates to a capactive sensor for sensing the amount of
material in a container. An understanding of the invention can be derived from a reading
of exemplary claim 16, which is reproduced below.
16. A sensor for capacitively sensing an amount of toner material in a
toner cartridge of a reprographic device, said sensor comprising:
an oscillator for generating an oscillating signal, said oscillator
comprising a toner capacitor; and
said toner capacitor comprising two electrodes, wherein one of
the electrodes is a conductive component part mounted to the toner
cartridge, and the other electrode is positioned outside of the toner
cartridge, wherein a capacitance of said toner capacitor depends on said
amount of toner material such that a frequency of said oscillating signal
depends on said capacitance.
PRIOR ART
The prior art references of record relied upon by the Examiner in rejecting the
appealed claims are:
Applicants admitted prior art figs. 1-2 and between page 2, line 16 to page 3, line 17 of
the specification. (AAPA)
Miyashiro 6,275,665 Aug. 14, 2001
Saito et al. (Saito) 6,282,384 Aug. 28, 2001
Yasumasa JP 11184235 A July 9, 1999
REJECTIONS
Rather than reiterate the conflicting viewpoints advanced by the Examiner and the
Appellants regarding the above-noted rejections, we make reference to the Examiner's
answer (mailed Mar. 23, 2006) for the reasoning in support of the rejection, and to
Appellants’ brief (filed Dec. 27, 2005) and reply brief (filed May 24, 2006) for the
arguments thereagainst.
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Application No. 10/233,845

Claims 16-19 stand rejected under 35 U.S.C. § 103(a) as being unpatentable over
AAPA and Miyashiro. Claims 21-35 stand rejected under 35 U.S.C. § 103(a) as being
unpatentable over AAPA in view of Miyashiro and Saito. Claims 16, 21, and 27 stand
rejected under 35 U.S.C. § 103(a) as being unpatentable over AAPA and Yasumasa.
OPINION
In reaching our decision in this appeal, we have given careful consideration to
Appellants’ specification and claims, to the applied prior art references, and to the
respective positions articulated by Appellants and the Examiner. As a consequence of
our review, we make the determinations that follow.
35 U.S.C. § 103
In rejecting claims under 35 U.S.C. § 103, the examiner bears the initial burden of
presenting a prima facie case of obviousness. See In re Rijckaert, 9 F.3d 1531, 1532, 28
USPQ2d 1955, 1956 (Fed. Cir. 1993). A prima facie case of obviousness is established
by presenting evidence that the reference teachings would appear to be sufficient for one
of ordinary skill in the relevant art having the references before him to make the proposed
combination or other modification. See In re Lintner, 458 F.2d 1013, 1016, 173 USPQ
560, 562 (CCPA 1972). Furthermore, the conclusion that the claimed subject matter is
prima facie obvious must be supported by evidence, as shown by some objective teaching
in the prior art or by knowledge generally available to one of ordinary skill in the art that
would have led that individual to combine the relevant teachings of the references to
arrive at the claimed invention. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). Rejections based on § 103 must rest on a factual basis with these
facts being interpreted without hindsight reconstruction of the invention from the prior
art. The Examiner may not, because of doubt that the invention is patentable, resort to
speculation, unfounded assumption or hindsight reconstruction to supply deficiencies in
the factual basis for the rejection. See In re Warner, 379 F.2d 1011, 1017, 154 USPQ
173, 178 (CCPA 1967). Our reviewing court has repeatedly cautioned against employing
hindsight by using the appellant's disclosure as a blueprint to reconstruct the claimed
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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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electrode on the exterior of the toner cartridge (Answer 4 and Miyashiro at col. 7). We
agree with the Examiner’s line of reasoning and find that the Examiner has set forth a
prima facie of obviousness of the invention as recited in independent claim 16.
Appellants maintain that the AAPA teaches that both of the toner capacitor
electrodes need to be within the toner cartridge and that the combination would have
made the toner capacitor unsatisfactory for its intended purpose (Br. 4-6). We disagree
with Appellants and find that Miyashiro teaches an express motivation and that the
AAPA relied upon by the Examiner merely teaches that there are problems associated
with having a capacitor electrode on the outside of the toner cartridge. We do not find
this to be an express teaching away as Appellants assert.
Furthermore, we find that Figure 3 of Appellants’ specification further teaches the
use of two capacitor electrodes outside the toner cartridge and some of the disadvantages
or concerns with the capacitor electrodes on the outside of the cartridge.
Appellants further argue that Miyashiro uses a reference capacitance value in the
determining step rather than “a capacitance of said toner capacitor depends on said
amount of toner material such that a frequency of said oscillating signal depends on said
capacitance” as recited in independent claim 16. Appellants maintain that replacing the
electrode placement of the AAPA with the electrode placement of Miyashiro would have
rendered the capacitive sensor inoperable to detect toner level of the toner cartridge
because the capacitive sensor of the AAPA is not operable when the electrode is placed
outside the container (Br. 6). We find no factual support for Appellants’ position as to
the inoperability of the sensor of the AAPA. While we agree that the discussion of the
specific electrical circuitry in the AAPA has difficulties with smaller capacitance values
when the electrode is on the outside, we find no specific circuitry, arrangement,
parameters of the sensor beyond the use of an oscillator and the placement of the
electrodes of a toner capacitor. Therefore, we cannot agree with Appellants that the
AAPA teaches away from the general breadth of the claimed invention to an oscillator
and toner capacitor with one electrode inside and one electrode outside the toner
cartridge.
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Application No. 10/233,845

Additionally, we note that the language of independent claim 16 does not
specifically recite the location of the electrode on the outside of the toner cartridge or that
the electrode is separate from the toner cartridge or that it is affixed to the housing of the
reprographic device rather than to the cartridge.
Since we find that the combination of the AAPA and Miyashiro teaches all of the
limitations as recited in independent claim 16 and that it would have been obvious to one
skilled in the art at the time of the invention to have combined the teachings in light of
the suggestion in Miyashiro, and we do not find that Appellants have presented a
persuasive argument that the combination is in error, we will sustain the Examiner’s
rejection of independent claim 16.
With respect to independent claim 21, Appellants reiterate the same arguments
with respect to the combination of the AAPA and Miyashiro and that Saito does not
remedy the shortcomings of the combination. We did not find a deficiency in the base
combination, therefore, this argument is not persuasive. We found that Miyashiro taught
the placement of one electrode positioned outside the toner cartridge and when the toner
cartridge is mounted in the reprographic device, the electrode on the exterior of the
cartridge is positioned within the device. Therefore, Appellants' argument is not
persuasive, and we will sustain the rejection of independent claim 21 and dependent
claims 22-26 grouped therewith.
With respect to independent claim 27, Appellants argue that the combination of
Saito, AAPA and Miyashiro, does not show or suggest a second electrode formed outside
the toner cartridge and fixedly mounted to the reprographic device (Br. 8). We find that
the combination teaches the second electrode formed outside the toner cartridge and
fixedly mounted to the reprographic device as discussed with respect to independent
claims 16 and 21. Therefore, Appellants' argument is not persuasive, and we will sustain
the rejection of independent claim 27 and dependent claims 28-35 grouped therewith.
With respect to independent claims 16, 21, and 27 as rejected under 35 U.S.C.
§ 103 over the combination of AAPA and Yasumasa, we agree with the Examiner that
Yasumasa similarly teaches the use of one electrode inside the toner cartridge and at least
one electrode on the outside of the toner cartridge. Appellants again argue that the
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Application No. 10/233,845

AAPA teaches away from the combination with Yasumasa as discussed earlier in the
Brief. Since we did not find that argument persuasive above, we again, do not find it
persuasive here without further embellishment or identification of limitations in the
express limitations of the claims. Therefore, Appellants' argument is not persuasive, and
we will sustain the rejection of independent claims 16, 21, and 27 over the combination
of AAPA and Yasumasa.
CONCLUSION
To summarize, we have sustained the rejections of claims 16-19 and 21-35 under
35 U.S.C. § 103.
No time period for taking any subsequent action in connection with this appeal
may be extended under 37 CFR § 1.136(a)(1)(iv) (2004).
AFFIRMED

ERROL A. KRASS )
Administrative Patent Judge )
)
)
)
) BOARD OF PATENT
JOSEPH L. DIXON ) APPEALS AND
Administrative Patent Judge ) INTERFERENCES
)
)
)
)
JEAN R. HOMERE )
Administrative Patent Judge )

JLD/rwk
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Appeal No. 2006-3218
Application No. 10/233,845

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