Appeal No. 2001-2673
Application No. 09/299,470 Page 7
teaches that the claimed shape of the marking, as illustrated in
figure 1, solves the problem in the prior art because “a rapid
deterioration in the identifying function is prevented” (page
20). Specifically, the specification teaches (page 5):
When the marking having the shape comprising multiple
sides rests on the outer periphery of the piezoelectric
element, the area is reduced in accordance with an
internal angle of the shape comprising multiple sides
and accordingly, a rate of reducing the area is smaller
than that of reducing the marking in the semicircular
shape.
We find that the admitted prior art, which teaches markings
having a semicircular shape (specification, Fig. 17), fails to
disclose the distinct structure of the claimed actuator, which
recites markings having a shape comprising multiple straight
sides. We observe that the function of the marking is to provide
a reference point by which to determine and control the proper
orientation of the element during the remainder of the
manufacturing process (specification, page 1), and therefore find
that the claimed marking is not merely printed matter as advanced
by the examiner. Accordingly, we find that the examiner has
failed to establish a prima facie case of anticipation with
respect to independent claim 1 and, consequently, has also failed
to establish a prima facie case of anticipation with respect to
claims 2 and 6 through 9 which depend therefrom.
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