Appeal No. 2001-2673
Application No. 09/299,470 Page 12
markings and their relationship to the electrode pattern.
Accordingly, we find that the examiner has failed to establish a
prima facie case of anticipation with respect to claim 4.
With respect to the alternative rejection of independent
claim 4 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 20) that the prior art does
not suggest the modifications necessary to achieve the structure
claimed in claim 4 and that the examiner has not provided a
rationale as to why such modifications would be obvious. We
incorporate by reference our finding, supra, that the prior art
fails to disclose the claimed multiple identifying markings and
their relationship to the electrode pattern. We also observe
that there is no suggestion in the acknowledged prior art to
replicate the single identifying marking which is taught therein.
We note that the examiner’s statement of obviousness is not a
substitute for evidence of motivation to modify the prior art to
provide a piezoelectric actuator having the claimed multiple
identifying markings and their claimed relationship with the
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