Appeal No. 95-2218
Application 07/902,073
B. Claims 12 and 15-17 are obvious
2. We agree with Appellant's complaint that the examiner's
combination of Pederson and Fischler appears to be the product of
hindsight. (Paper 14 at, e.g., 15.) The examiner looks to
Fischler to supply an element missing from Pederson in order to
meet the claimed invention. (Paper 9 at 4-5.) While it is true
that hindsight is necessary to the extent of narrowing the focus
of the examination to the claimed subject matter, the motivation
to combine must make sense in terms of the prior art per se
without reference to the claims. In re McLaughlin, 443 F.2d
1392, 1395, 170 USPQ 209, 212 (CCPA 1971). Although the examiner
was generally on the right track, we conclude that his rationale
was unacceptably based on hindsight.
3. We, nevertheless, conclude that the subject matter of
claims 12 and 15-17 would have been obvious in light of Pederson
and Fischler. The Fischler reference would have motivated a
person having ordinary skill in the art to use a zone bit
recorded (ZBR) hard disk system like Fischler's for the reasons
(access time, data density, cost, reliability, size) Fischler
discloses. Findings 13 and 14, supra. The same person would
also have been motivated to provide hard disk diagnostic
circuitry for a ZBR system for the same reasons (many sources of
defects that can occur after the disk is in use) Pederson
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