Appeal No. 2003-0176
Application 08/909,590
For a prima facie case of obviousness to be established, the
teachings from the prior art itself must appear to have suggested
the claimed subject matter to one of ordinary skill in the art.
See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA
1976). The mere fact that the prior art could be modified as
proposed by the examiner is not sufficient to establish a prima
facie case of obviousness. See In re Fritch, 972 F.2d 1260,
1266, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992).
The examiner merely asserts that each of Harnden and Koal
teach that polarizing only the active area of a piezoelectric
element reduces mounting stress stray signals and provides a
place to attach lead wires. The examiner does not establish that
Harnden or Koal actually provide such a disclosure. Moreover,
the examiner does not take into account the differences between
the structure of Tabota and those of Harnden and Koal and explain
why, regardless of these differences, Harnden or Koal themselves
would have led one of ordinary skill in the art to eliminate
Tabota’s intermediate electrode.
The examiner argues that “Koal is explicit that the ‘edge’
and ‘tail’ areas should not be piezoelectrically active
(col. [sic] Ln 51-59), which has the same operating effect as not
polarizing those regions” (answer, page 5). The examiner
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