Appeal No. 96-0643
Application 08/103,677
Since the examiner offers no other objection to the claims, the indefiniteness rejection of Claims
4-6, 9-10, and 12 is not sustained.
2. Obviousness of Claims 1-2
Claims 1-2 stand rejected under 35 U.S.C. § 103 as unpatentable over admitted prior art
Figure 8B in view of admitted prior art Figure 7.
The examiner concedes that the admitted prior art does not disclose a moving means
“substantially within” a length and width of the disk cartridge as recited in Claims 1 and 2. Examiner’s
Answer at 5. According to the examiner, such a modification “would have been a matter of routine
engineering skill.”
The mere fact that the prior art may be modified in the manner suggested by the examiner does
not make the modification obvious unless the prior art suggested the desirability of the modification. In
re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992). In the
present case, the examiner’s invocation of “routine engineering skill” does not address the requirement
that the prior art suggest the desirability of the modification under In re Fritch. Upon our own review
of the admitted prior art, we are unable to identify such a suggestion. Therefore, the rejection of Claims
1 and 2 over admitted prior art will not be sustained.
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Last modified: November 3, 2007