Appeal No. 2001-2673
Application No. 09/299,470 Page 8
With respect to the alternative rejection of claim 1 under
35 U.S.C. § 103(a), the examiner’s position (answer, pages 3-4),
is that it would have been obvious to one of ordinary skill in
the art to provide the prior art piezoelectric actuator with any
suitable markings, regardless of shape, based upon the explicit
teaching of the prior art to provide markings in the first place.
Appellants argue (brief, page 23) that the examiner has
failed to establish a prima facie case of obviousness. We agree
with appellants’ contention that “[m]ere speculation or
conclusory allegations are simply inadequate” to meet the
examiner’s burden of providing “an evidentiary basis establishing
that each and every limitation of a rejected claim would have
appeared obvious to the ordinarily skilled practitioner” (brief,
page 22).
We incorporate by reference our finding, supra, that the
acknowledged prior art, which teaches markings having a
semicircular shape, fails to disclose the distinct structure of
the claimed actuator, which recites markings having a shape
comprising multiple straight sides. We find the examiner’s
argument, that “it would have been obvious to one of ordinary
skill in the art that indicia or markings could be any suitable
shape,” is not a substitute for evidence of motivation to modify
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