Appeal No. 1998-1927
Application No. 08/703,276
With regard to the examiner's rejection of claim 21 under 35 U.S.C. § 103 as being
unpatentable over the Fisher patent in view of McCarty or Aida, the appellants' only argument
is that the Fisher patent fails to disclose "means restrictively positioning . . . for location of
the acoustic source at said focal point to establish said impingement of the acoustic energy
simultaneously all along one of the pair of the fiber-optic cables on the detection surface" (brief,
page 5). The examiner expressly concedes that the Fisher patent fails to disclose this feature,
but takes the position that the teachings of either McCarty or Aida would have suggested
inclusion of such a feature on the acoustic sensor of the Fisher patent (answer, pages 6 and 7).
As the appellants have not included any argument in their brief or reply brief contesting the
examiner's determination of obviousness, we are constrained to sustain the examiner's rejection
of claim 21.6
CONCLUSION
To summarize, the decision of the examiner to reject claims 1 and 12 under 35 U.S.C.
§ 102(b) and claims 7-10 and 21 under 35 U.S.C. § 103 is affirmed.
6We hasten to point out that claim 21 is drafted as a Jepson (Ex parte Jepson, 1917 C.D. 62, 243 O.G. 525
(Ass't Comm'r Pat. 1917), incorporated into the rules as 37 CFR § 1.75(e)) type claim in which the preamble of the
claim is an admission of prior art. Note, In re Fout, 675 F.2d 297, 301, 213 USPQ 532, 536 (CCPA 1982). That is,
the appellants admit that, akin to the teachings of Fisher, acoustic sensors of the type recited in claim 21 before "the
improvement . . ." were well known in the art at the time of the appellants' invention and that the only distinction
between the prior art and the appellants' claimed invention is the "means restrictively positioning . . . for location
. . ." recited in claim 21. McCarty and Aida are evidence that means for locating the focal point of an acoustic
transducer were also known in the art at the time of the appellants' invention and appear to us to provide suggestion
for one of ordinary skill in the art to provide such a feature on the admitted prior art acoustic sensor to achieve the
self-evident advantages thereof. This leads us to the same conclusion reached by the examiner, that the subject
matter of claim 21 as a whole would have been obvious at the time the invention was made to a person having
ordinary skill in the art within the meaning of 35 U.S.C. § 103.
7
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