Appeal No. 96-0663
Application No. 08/253,618
Claims 14, 17 and 18 set forth, in great detail, particular
methods for writing data tracks on a floppy disk. Without hereat
repeating the many and varied steps included in the claimed
methods, suffice it to say that in the face of such detailed
method steps, the examiner may not point generally to prior art
structure and conclude that the claimed methods would have been
obvious. The burden, in the first instance, is with the examiner
to establish a prima facie case of obviousness, whether it be
with regard to 35 U.S.C. 103 or obviousness-type double
patenting.
At the very least, and as a matter of fair play, the
examiner should point out how he considers each and every step of
the claimed methods to read on, or be suggested by, the applied
references so that appellants are given an opportunity to
understand the examiner’s position and to respond thereto. The
examiner has not done this and we will not speculate as to the
correspondence between the claimed steps of appellants’ methods
and the structure of the applied references. The examiner has
offered nothing in the way of pointing out how the prior art
structures are deemed to perform the method steps, as claimed.
Even in the face of appellants’ arguments in this regard,
the examiner offers no response, save at page 6 of the answer,
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