Appeal No. 95-1308
Application 07/999,502
stored in a record for later analysis. The references deal with real time monitoring and control, e.g.,
Gaudet triggers control circuitry to stop the disk drive operation whenever head crash conditions are
detected and Smith generates a write fault signal to stop writing of the read/write heads when the
external force is in excess of a predetermined threshold. The examiner points to no suggestion in the
references of storing the claimed physical operation conditions. If there was any suggestion of storing
one of the operating conditions for error analysis, it would be possible to analogize this to other
operating conditions; however, we find no such suggestion, nor has the examiner pointed to any in
the record.
The examiner concludes (Examiner's Answer, page 6):
It would have been obvious at the time the invention was made to a person having
ordinary skill in the art to provide the combination system of Coale and Chang et al. with each
of parameters the art has recognized to be indicative of the physical configuration of the disk
file; including temperature (Kaida), vibration (Smith), power supply (Fukushima et al.), and
flying height (Gaudet et al.); in order to provide a reliable, composite indication to the
combination system to provide one with all the information concerning the physical
configuration of a disk file in order to diagnose the system to find a way to correct for an
error.
It is not sufficient to be able to make up a plausible reason for the combination. While the admitted
prior art driver may be capable of being modified to work the way appellants' apparatus is claimed,
there must be a suggestion or motivation in (or from) the references to do so. See In re Mills, 916
F.2d 680, 682, 16 USPQ2d 1430, 1432 (Fed. Cir. 1990) ("While Mathis' apparatus may be capable
of being modified to run the way Mills' apparatus is claimed, there must be a suggestion or motivation
in the reference to do so."); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir.
1984) ("The mere fact that the prior art could be so modified would not have made the modification
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