Appeal No. 96-0626
Application 08/187,328
silicon. (Brief at page 9, et seq. and Reply Brief at page 4,
et seq.)
The Examiner contends that since diamond-like carbon
and silicon are good insulators, it would be obvious to use
either of them as an insulating layer in a MR head.
(Examiner's response to the Reply Brief, Paper No. 13, page 4,
et seq.)
We find no motivation to use silicon or diamond-like
carbon as the prior art insulating layers of a MR head in
Appellants' admitted prior art or Suyama. The Federal Circuit
states that "[t]he 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), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125,
1127 (Fed. Cir. 1984). "Obviousness may not be established
using hindsight or in view of the teachings or suggestions of
the inventor." Para-Ordnance Mfg. v. SGS Importers Int’l, 73
F.3d 1085, 1087,
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 Next
Last modified: November 3, 2007