Appeal No. 2003-0121
Application No. 09/143,318
5 USPQ2d 1434, 1438 (Fed. Cir.), cert. denied, 488 U.S. 825
(1988); Ashland Oil, Inc. v. Delta Resins & Refractories, Inc.,
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore
Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984).
These showings by the examiner are an essential part of complying
with the burden of presenting a prima facie case of obviousness.
Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444
(Fed. Cir. 1992).
In our view, the examiner has fallen far short of presenting
a prima facie case of obviousness. In particular, the examiner
has not applied any of the six applied references to the instant
claim language. Without giving any particulars, the examiner has
merely alleged that any one of the three primary references
teaches a “self-excited vibration motor including a rotor, stator
base, a pressing means and a drive circuit,” that any one of the
three secondary references teaches providing “piezoelectric
ultrasonic motors with various parts formed of insulating
material...” and that it would have been obvious to provide the
parts of any of the three primary references as “insulating
materials.”
As appellants have explained, the instant claimed subject
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