Appeal No. 96-2747
Application 08/245,518
Aronoff's teaching in Figure 3, to which the examiner referred,
is a pattern of "repetitions of non-circular curves" whose
function is to form a path to facilitate fluid communication
across the surface of the slider (column 5, lines 25 through 31).
At best, therefore, Aronoff would have suggested this pattern to
one of ordinary skill in the art. Moreover, in Aronoff the
texturing is used on the face of the slider itself, there being
no showing of bearing pads at all, much less a teaching that
texturing is useful on them.
The test for obviousness is what the combined teachings of
the prior art would have suggested to one of ordinary skill in
the art. See In re Keller, 642 F.2d 413, 425, 208 USPQ 871, 881
(CCPA 1981). In establishing a prima facie case of obviousness,
it is incumbent upon the examiner to provide a reason why one of
ordinary skill in the art would have been led to modify a prior
art reference or to combine reference teachings to arrive at the
claimed invention. See Ex parte Clapp, 227 USPQ 972, 973 (BPAI
1985). To this end, the requisite motivation must stem from some
teaching, suggestion or inference in the prior art as a whole or
from the knowledge generally available to one of ordinary skill
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