Ex Parte NEMAZIE et al - Page 5



          Appeal No. 1999-0243                                                        
          Application 08/434,457                                                      

          but teaches providing both the cylinder information and the                 
          actual physical sector number within the sector.  The Examiner              
          then points to Hikita's disclosure of a circuit 15 for converting           
          a physical sector number into a logical sector number, and                  
          asserts that it would have been obvious to one of ordinary skill            
          in this art to have applied Hikita's teaching to Greenberg in               
          order to enable a computer to access a disk solely on the basis             
          of logical addresses.                                                       
               In response to Appellants' argument that neither Greenberg             
          nor Hikita teaches or suggests generating logical sectors from              
          physical sectors, the Examiner asserts that Hikita clearly                  
          teaches physical to logic sector conversion, and element 15 of              
          Hikita is marked as a physical-logical sector number conversion             
          circuit.                                                                    
               "Obviousness may not be established using hindsight or in              
          view of the teachings or suggestions of the inventor."  Para-               
          Ordnance, 73 F.3d 1085, 1087, 37 USPQ2d 1237, 1239, citing W. L.            
          Gore & Assocs., 721 F.2d 1551, 1553, 220 USPQ 311, 312-13.  In              
          addition, our reviewing court requires the PTO to make specific             
          findings on a suggestion to combine prior art references.  In re            
          Dembiczak, 175 F.3d 994, 1000-01, 50 USPQ2d 1614, 1617-19 (Fed.             

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