Appeal No. 2001-2673
Application No. 09/299,470 Page 10
that the prior art fails to disclose the claimed limitation that
an identifying marking be formed between contiguous electrodes in
the electrode pattern. Accordingly, we find that the examiner
has failed to establish a prima facie case of anticipation with
respect to claim 3.
With respect to the alternative rejection of claim 3 under
35 U.S.C. § 103(a), the examiner’s position (answer, page 3), 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 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 find
that the prior art fails to disclose the claimed limitation that
an identifying marking be formed between contiguous electrodes in
the electrode pattern, rather than on a portion of a single
electrode. The examiner’s statement of obviousness does not
provide a sufficient factual basis for a showing of incentive or
motivation to provide prior art piezoelectric actuators with
identifying markings formed between contiguous electrodes.
Accordingly, we find that the examiner has not established a
prima facie case of obviousness with respect to claim 3.
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