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Ex parte NAITO et al. - Page 5
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Board of Patent Appeals and Interferences > 1998 > Ex parte NAITO et al. - Page 5
Appeal No. 96-0496
Application No. 08/131,332
no need to mount an initializing magnet inside the
optical reading and writing apparatus.
Clearly then, it is not reasonable for the examiner to
incorporate magnets 8 and 9 of Tadokoro in any manner to result
in the pairs of magnets recited in independent claim 5.
In response to appellants’ arguments, the examiner then
explains that it would have been obvious to replace the upper and
lower initializing magnets 8a and 8b of Tadokoro with pairs of
magnets because “mere duplication of the essential working parts
of a device involves only routine skill in the art” [page 10-
supplemental answer]. We disagree. The use of pairs of magnets,
as claimed, results in different magnetic fields and the use of
such pairs of magnets is functionally different from the use of a
single magnet on each arm of the yoke. Appellants’ modification
of the prior art through the use of pairs of magnets is more than
a “mere duplication ofYparts.” The examiner has not shown, to
our satisfaction, why it would have been obvious to replace each
single magnet on each arm of the yoke, as disclosed by Tadokoro,
with a pair of magnets, as set forth in independent claim 5.
Accordingly, we will not sustain the rejection of claims 5
and 6 under 35 U.S.C. ' 103.
INDEPENDENT CLAIM 9
This claim requires that the upper and lower arms of the
yoke be “respectively attached to indentations formed in the
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Last modified: November 3, 2007
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