Appeal No. 96-0643
Application 08/103,677
At oral argument, appellants persuasively argued that there is no motivation or suggestion to
combine Liu and the admitted prior art in the particular arrangement claimed. We agree. Even if Liu
disclosed a bearing portion interposed between coplanar portions of the base and the head
holder, and even if one skilled in the art was motivated to incorporate Liu’s teachings regarding the
guideshaft into the admitted prior art, it appears that such a combination would result in the claimed
invention only with the improper use of appellants’ specification as a template.
6. Obviousness of Claim 6
Claim 6 stands rejected under 35 U.S.C. § 103 as unpatentable over admitted prior art Figure
8B in view of Liu as applied to Claims 4-5, further in view of Hasegawa. The examiner’s rejection of
Claim 6 relies on the rationale, rejected above, applied to Claims 4-5. Therefore, we will not sustain
this rejection.
7. New Ground of Rejection
Claims 1-2, 7-10, and 13 are hereby rejected under 35 U.S.C. § 103 as unpatentable over
Suzuki (see translation included herewith). Suzuki appears to disclose the claimed subject matter
except for an upper head arm. It would have been obvious to one of ordinary skill in the art to add an
upper head arm to Suzuki (which already has a lower head arm) because discs are now commonly
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