Appeal No. 95-1308
Application 07/999,502
3-5 of Coale is present between the Subsystem Environment database and the service alert output (4),
claim 1 does not preclude the presence of this additional structure. Accordingly, we agree with the
examiner that there is an external connection port (4) to the Subsystem Environment database
memory.
In our opinion, the problem with the rejection is that there is no evident motivation for
modifying Coale to store operating condition records of the types claimed, i.e., temperature,
vibration, power supply output voltage, and transducer-to-medium clearance. "It is well established
that before a conclusion of obviousness may be made based on a combination of references, there
must have been a reason, suggestion, or motivation to lead an inventor to combine those references."
Pro-Mold and Tool Co. v. Great Lakes Plastics Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629
(Fed. Cir. 1996). A suggestion to combine "may come expressly from the references themselves.
It may come from knowledge of those skilled in the art that certain references, or disclosures in the
references, are known to be of special interest or importance in the particular field. It may also come
from the nature of a problem to be solved, leading inventors to look to references relating to possible
solutions to that problem." Id. at 1573, 37 USPQ2d at 1630 (citations omitted). We look at more
than just the express teachings of the references, but the references are the logical place to start.
We find no suggestion in Coale, express or implied, to store anything other than the types of
usage and error records associated with reading and writing to a disk. The examiner has done a
thorough job in finding references which individually teach detecting one of the claimed operating
conditions. However, none of these references suggest that the physical operating conditions be
- 10 -
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007