Appeal No. 93-2518
Application 07/696,059
We note that Morrison also discloses that the conversion is
favored by small tube radii (Page 2111, Col. 2).
The examiner is of the opinion that:
Morrison clearly implies that the analysis of
a conversion of electromagnetic energy to
pressure variations or electro-
mechanical energy (of which acoustic and
seismic energy are) and vice-versa, the
conversion of electromechanical energy to
electromagnetic energy are not unlike each
other. [Examiner’s Answer at page 5].
We will not sustain this rejection.
It is the burden of the examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the expressed or implied suggestions found
in the prior art. See In re Sernaker, 702 F.2d 989, 994, 217
USPQ 1, 5 (Fed. Cir. 1983).
We agree with the appellants that Morrison does not
suggest any application to geophysical prospecting but rather is
limited to pump/generator devices. In our view, the only
suggestion for combining the teachings of Morrison with either
Thompson or Zimmerman in the manner proposed by the examiner
stems from impermissible hindsight knowledge derived from the
appellants’ own disclosure. Accordingly, we will not sustain the
rejection of claims 1, 8-12, 14, 16-18, 22, 23 and 25-29 under 35
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