Appeal No. 1999-2281
Application No. 08/621,521
As to the obviousness rejection of claims 5, 6, 8, 18,
19, and 26 over Gill, appellants again assert (Brief, pages
10-11)
that Gill is not prior art. We have already found above that
Gill is prior art. Appellants also argue (Brief, page 11)
that the examiner's motivation for modifying Gill for the
number of projections used on the face of the transducer, as
recited in claims 6, 8, 18, and 19, and for the dimensions
recited in claims 5 and 26 is improper. In particular, the
examiner states (Final Rejection, page 6) that the motivation
is that the claimed limitations "would have been the obvious
result of routine experimentation and optimization." Although
optimization of a result effective variable would have been
obvious in accordance with In re Boesch, 617 F.2d 272, 205
USPQ 215 (CCPA 1980), the examiner has not indicated that the
variables at issue are result effective. The examiner has
failed to provide any explanation as to why such optimization
would have been obvious. Therefore, the examiner has failed
to establish a prima facie case of obviousness. Consequently,
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