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
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