Appeal No. 97-1167 Page 11
Application No. 08/475,062
whole, we look to the subject matter recited in the claim and
to those properties of the subject matter disclosed in the
specification. Antonie, 559 F.2d at 619, 195 USPQ at 8.
Here, the invention as a whole is maintaining the SHD of a
reproduced signal at or below -25 dB,
(Spec. at 9), and its disclosed property. The property is
that by maintaining the SHD at or below such a level, the
invention minimizes the bit error rate of data it reproduces.
(Id.)
The controlling question is simply whether the
differences, viz., namely the value of -25 dB and its
property, between the prior art and the appellants’ invention
as a whole are such that the invention would have been
obvious. The answer is no. The examiner has not shown that
the prior art as a whole recognized that the bit-error-rate
depends on the SHD. Recognition of this dependence is
essential to the obviousness of conducting experiments to
decide the value of the SHD that will offer an acceptable bit-
error-rate. Such dependence can be determined from data
representing bit-error-rate versus SHD as revealed by the
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