Appeal No. 1997-3088
Application No. 08/521,562
Accordingly, we will not sustain the rejection of claims 1, 5, 6, 8, 11, 17, 23, 26, 27,
29 and 30 under 35 U.S.C. § 102(b) as Crawley does not anticipate the claimed subject
matter.
With regard to the alternative rejection of these claims under 35 U.S.C. § 103 over
Crawley, we also will not sustain this rejection because we find no reason for the artisan to
have taken the teaching of Crawley and have modified it to make a separate “pre-formed”
control patch or “assembly” of piezoelectric elements which could then be attached to the
foundation member, as claimed. The examiner merely states that it would have been
“obvious...to embed the device of Crawly [sic, Crawley] in a foundation member since the
applicants have not disclosed that embedding solves any stated problem or is for any
particular purpose that [sic] and it appears that the invention would perform equally well
with other placement of the patch [sic]” [Answer-page 5]. The examiner clearly has not set
forth a convincing line of reasoning as to why the instant claimed subject matter would have
been obvious, within the meaning of 35 U.S.C. § 103. As such, no prima facie case of
obviousness has been established by the examiner.
We also will not sustain the rejection of claims 2, 4-7, 10, 12, 13, 16, 18, 20-22, 25,
28 and 31-33 under 35 U.S.C. § 103 over Crawley in view of Forward or the
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