Appeal No. 2001-2673
Application No. 09/299,470 Page 14
marking thereupon (brief, page 12). We incorporate by reference
our finding, supra, that the prior art fails to disclose the form
of the marking of claim 1, in finding, for the same reasons, that
the prior art fails to disclose the form of the marking of claim
10. We therefore find that the prior art discloses a
semicircular marking while the claimed marking has a shape
comprising multiple sides. Accordingly, we find that the
examiner has failed to establish a prima facie case of
anticipation with respect to independent claim 10 and,
consequently, has also failed to establish a prima facie case of
anticipation with respect to claims 11 through 17 which depend
therefrom with further limitations.
With respect to the alternative rejection of claim 10 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 such markings in the first
place.
Appellants argue (brief, page 23) that the examiner has
failed to establish a prima facie case of obviousness.
Appellants further argue (brief, page 11) that claim 10 recites a
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