Appeal No. 1997-0447
Application No. 08/231,513
invention and that Shibata teaches nothing which would have motivated skilled artisans to
reduce the width as claimed. (See brief at page 5.) We agree with appellants.
Furthermore, the examiner maintains that the extended portion of the upper magnetic pole
would provide improved shielding. (See answer at page 4.) Appellants argue that
Shibata does not teach or suggest making the upper magnetic pole with an extended
portion. (See brief at page 5.) We agree with appellants. Moreover, appellants argue that
there is no apparent reason why shielding would be improved or the flux more stable. Id.
We agree with appellants that the examiner has proffered conclusions with respect to
modifications which are not convincing to modify the invention of Shibata absent some
specific evidence or motivation together with a supporting line of reasoning to do so. In
our view, the examiner has attempted to reconstruct the claimed invention from a proposed
modification to the prior art to Shibata based upon hindsight reconstruction. Therefore, we
will not sustain the rejection of independent claim 1 nor dependent claim 6.
With respect to dependent claims 2-5, the examiner has not relied upon the
teachings of Tanabe to teach or suggest the improvements recited in the language of
claim 1, and from our review of Tanabe, we find that Tanabe does not teach or suggest
what is lacking in Shibata with respect to the language of claim 1. Since Tanabe
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