Appeal No. 95-5142
Application 08/078,917
one of ordinary skill in the art would have been
motivated to provide the magnetoresistive read transducer
of the Applicant's Prior Art with an exchange layer which
contacts a soft adjacent layer and is on the opposite
side of the soft layer from the spacer layer as shown in
Hempstead et al[.] in order to have fixed the
magnetization of the adjacent layer. [Final Office
action at 3-4.]
Appellant responded with several arguments, one of which
is that Hempstead fails to address the power consumption
problem solved by Appellant's invention (Brief at 5). This
argument is unconvincing because the teachings of the prior
art need not be combined to solve the same problem that is
solved by the claimed invention. In re Beattie, 974 F.2d
1309, 1312, 24 USPQ2d 1040, 1042 (Fed. Cir. 1992).
Appellant also argued (Brief at 6) that the motivation
alleged by the examiner (i.e., fixing the magnetization of the
soft adjacent layer) lacks support and that "the use of
unsupported statements by the Examiner as to the motivation of
one or ordinary skill in the art is improper and should not be
the basis for determining obviousness," citing In re Fritch,
972 F.2d 1260, 1265, 23 USPQ2d 1780, 1783 (Fed. Cir. 1992)
(the examiner can satisfy the burden to make out a prima facie
case for obviousness only by "showing some objective teaching
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