Appeal No. 2003-0121
Application No. 09/143,318
member such that a current path would exist between the
conductive member and an electrode of the piezoelectric element
if the components of the ultrasonic motor were formed of
conductive materials. Thus, appellants are alleging that there
“is no disclosure in the applied references cited by the Examiner
that would have suggested the mounting of an ultrasonic motor
directly to a conductive member of a device through which a
current passes” (principal brief-page 19).
In rejecting claims under 35 U.S.C. § 103, it is incumbent
upon the examiner to establish a factual basis to support the
legal conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set forth
in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ 459, 467
(1966), and to provide a reason why one having ordinary skill in
the pertinent art would have been led to modify the prior art or
to combine prior art references to arrive at the claimed
invention. Such reason much stem from some teachings,
suggestions or implications in the prior art as a whole or
knowledge generally available to one having ordinary skill in the
art. Uniroyal, Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1051,
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