Appeal No. 1999-2283
Application No. 08/690,525
the head gap. According to the Examiner, the skilled artisan
would have been motivated and found it obvious to extend the
coverage of the protective layers of JP ‘517 into the head gap
as taught by SU ‘151 “... in order to improve wear-resistant
characteristics of the magnetic head.” (Answer, page 5).
In response, Appellants assert (Brief, pages 7-9) a lack
of suggestion or motivation in the references for combining or
modifying teachings to establish a prima facie case of
obviousness. After careful review of the applied prior art
references, we are in agreement with Appellants’ stated
position in the Brief. 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, 23 USPQ2d 1780, 1783-84 (Fed. Cir. 1992).
The JP ‘517 reference approaches the problem of providing
wear protection for a magnetic head by utilizing a first
relatively thin (100-1000 Angstroms) metal oxide adhesive
layer over which is provided a relatively thick (10-20
microns) abrasion-resistant layer comprising carbides or
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