Appeal 2007-0240
Application 10/602,462
To the extent Appellants argue in the Brief and Reply Brief that Rose
teaches away from the claimed invention, this view is misplaced. "'A
reference may be said to teach away when a person of ordinary skill, upon
[examining] the reference, would be discouraged from following the path set
out in the reference, or would be led in a direction divergent from the path
that was taken by the applicant.' In re Gurley, 27 F.3d 551, 553, 31 USPQ2d
1130, 1131 (Fed. Cir. 1994)." (Brackets in original.) Para-Ordnance Mfg. v.
SGS Importers Int'l, 73 F.3d 1085, 1090, 37 USPQ2d 1237, 1241 (Fed. Cir.
1995). Rose may be fairly characterized as not teaching at all any aspect
ratio or as being merely silent as to this aspect of claim 35 on appeal. Rose
does not plainly discourage an artisan from following the path set out or
would have led the artisan in a direction divergent from the path taken by
Appellants.
To the extent Appellants’ remarks as to the second stated rejection
pertaining to dependent claim 35 on appeal contend that there is an
insufficient suggestion or motivation to have combined the teachings of
Rose with those of Hsiao, we disagree with these urgings. The Examiner’s
rationale at page 10 of the Answer is a more persuasive analysis of the
combined teachings of these two references. Beginning in the paragraph at
the middle of column 5 of Hsiao, this reference does teach that it was known
in the art to have an aspect ratio (t/w) or height divided by the width of “at
least 2.5” as recited at the end of claim 35 on appeal. As also expressed at
the end of the Abstract, the end of the patent and in the Summary of the
Invention at columns 1 and 2 of Hsiao, the artisan would have well
appreciated the advantages of utilizing a high aspect ratio induction coil in
the magnetic recording and reading medium arts. Even Appellants’
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