Appeal No. 96-1631
Application 08/136,997
attempts to place the burden on Appellant to provide evidence of
criticality. Examiner’s Answer at 6-7. Appellants argue that
absent a teaching of the recited feature in the references, the
claims are patentable. Reply (Paper No. 20) at 2.
We agree with Appellant.
The mere fact that the prior art may be modified in the
manner suggested by the examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification. In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d
1780, 1783-84 n.14 (Fed. Cir. 1992). In the present case, the
examiner has failed to establish such a suggestion and has thus
failed to set forth a prima facie case of unpatentability.
The examiner has not identified any suggestion in the
prior art to change the configuration shown in the top drawing of
Appendix A to that shown in the bottom drawing. Such a change
would require these three modifications to the configuration
shown in the top drawing: (1) remove the non-magnetic material
from the perpendicular sidewalls; (2) extend the pole tips to the
perpendicular sidewalls; and (3) insert non-magnetic material at
the parallel sidewalls. The examiner offers no reason why one
skilled in the art would make any of the required modifications,
let alone all of them.
-4-
Page: Previous 1 2 3 4 5 6 Next
Last modified: November 3, 2007