Ex parte DOWNS - Page 10

          Appeal No. 95-3273                                                          
          Application 08/136,856                                                      

          layers for protection against environmental moisture.  The                  
          examiner stated the case for obviousness as follows:                        
                    [S]ince Rokurota's ultrasonic transducer is being used            
                    on [sic] human body, it would have been obvious to one            
                    of ordinary skill in the art at the time the invention            
                    was made to provide water-resistant protective layers             
                    for Rokurota's piezoelectric sandwich and the substrate           
                    because this would protect Rokurota's ultrasonic                  
                    transducer from moisture generated by the human body.             
                    [Answer at 5.]                                                    
          Appellant responds by arguing that "the logically obvious                   
          extension of the Examiner's argument is that Rokurota was not               
          skilled in the art to which his invention pertained" (Reply Brief           
          at 4).  Assuming this is intended as a challenge to the                     
          examiner's argument for obviousness, it is unpersuasive.                    
          Inasmuch as Rokurota was under no obligation to describe every              
          obvious modification of his invention of which he was aware when            
          he filed his application, his failure to disclose a particular              
          modification does not imply that it was beyond his skill or, more           
          important, the skill of a person having ordinary skill in the               
          art.  Hence, the failure of a reference to disclose a claimed               
          feature does not, in and of itself, constitute a "teaching away"            
          from modifying the reference to include that feature.  See Para-            
          Ordnance Manufacturing v. SGS Importers International, 73 F.3d              
          1085, 1090, 37 USPQ2d 1237, 1241 (Fed. Cir. 1995) (failure of               
          reference to disclose using a convergence frame is not a teaching           


Page:  Previous  1  2  3  4  5  6  7  8  9  10  11  12  13  Next 

Last modified: November 3, 2007