Ex parte EDWARD S. KOLESAR - Page 7




          Appeal No. 94-3696                                                          
          Application 07/995,230                                                      


          voltage to a piezoelectric material being used as a sensor and              
          providing an electrical signal as an output.  The connection is             
          too remote.  The appellant is correct that the claims do not                
          simply recite the sensor aspect of the invention in the preamble            
          of the claims.  Rather, physical force sensing is recited clearly           
          in the body of the independent claims.                                      
               The examiner has not cited sufficient evidence revealing               
          that the particular problems relating to using piezoelectric                
          material to convert electrical energy to mechanical energy were             
          also known to plague using the material to convert mechanical               
          energy to electrical energy.  Also, even assuming that the same             
          problems were recognized, it cannot be assumed that the same                
          solutions would work in the different settings, given the reverse           
          nature of the operations and requirements for inputs and outputs.           
          There can be no presumption that whatever one would do when using           
          piezoelectric material to provide mechanical motion one would do            
          the same when using the material as a sensor.  Moreover, in this            
          case, while the claims call for "temporary" application of a low            
          biasing voltage to precondition the material, the biasing                   
          voltages of Rudnick and May, Jr., as identified by the examiner             
          are not temporary.                                                          
               The mere fact that the prior art may be modified in the                

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