Ex parte HEATH et al. - Page 8




              Appeal No. 1998-2500                                                                                         
              Application No. 08/276,154                                                                                   




                                                    35 U.S.C. § 102                                                        

                    Appellants argue that the “present invention provides a circuit, separate from the                     
             microcontroller, which interfaces between the formatter and the servo circuitry so that: 1. the               
             data transfer step can begin automatically, and substantially immediately, after a servo step                 
             has ended; and 2. a servo step can begin automatically, and substantially immediately, after                  
             the data transfer.”  (See brief at page 12.)  While this is true of the disclosed invention,                  
             appellants have not correlated these benefits to the language of claim 1.  Therefore, this                    
             argument is not persuasive.                                                                                   
                    With respect to claim 1, the examiner maintains that Anderson teaches the invention                    
             as recited in claim 1.  (See answer at page 5.)  We agree with the examiner.  Appellants                      
             argue that “the present invention deals with latency without encountering any of the problems                 
             associated with the prior art.  The present invention does not start the servo step until the data            
             transfer is complete.  Further, the present invention does not start data transfer at a new track             
             until the servo step is complete.  Therefore, the present system is not attempting to read or                 
             write while it is being moved off of the track center.”                                                       


             (See brief at page 13.)  Appellants argue that this is supported by “independent claim 1                      
             where it states that ‘the beginning of the step in which the head is positioned over the next                 
             track is not started until the head has reached an end of the first track.’  Therefore, this                  
             indicates that the physical servo step positioning step is not performed during the data                      
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