Appeal No. 95-5146
Application 08/152,557
776 F.2d 281, 293, 227 USPQ 657, 664 (Fed. Cir. 1985), cert.
denied, 475 U.S. 1017 (1986); ACS Hospital Systems, Inc. v.
Montefiore Hospital, 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir. 1984). These showings by the examiner are an essential part
of complying with the burden of presenting a prima facie case of
obviousness. Note In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d
1443, 1444 (Fed. Cir. 1992).
The examiner has cited Soda as representative of a
conventional magnetic head which can record and reproduce on
longitudinal magnetic tracks of analog or digital cassette tapes.
The examiner acknowledges that Soda does not teach a cleaning
groove on the contact face of the magnetic head as recited in
independent claim 20 [answer, page 4]. The examiner cites Kimura
as disclosing a magnetic head having a cleaning groove. The
examiner asserts that it would have been obvious to provide the
Soda magnetic head with a cleaning groove as taught by Kimura.
With respect to the various dimensions recited in claim 20, the
examiner argues that the specific claimed values would have been
obvious through routine design experimentation [answer, pages 4-
5].
Appellant argues that the indentations 2b which the
examiner has referred to as the cleaning grooves in Kimura are
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