Appeal No. 1996-1309
Application 08/053,174
is greater than the width of an adjoining channel and is
radially
outward therefrom, providing a transition region between the
idle region and the data storage region. Appellants argue
that neither Kato nor Samoto teaches or suggests the above
limitation as recited in Appellants' claim 25.
On page 5 of the Examiner's answer, the Examiner
states that neither Kato nor Samoto shows the specific
arrangement of grooves becoming either deeper or wider as the
grooves approach the inside of the disk. The Examiner argues
that this feature would be a matter of routine experimentation
and optimization for those skilled in the art.
The Examiner has failed to set forth a prima facie
case. It is the burden of the Examiner to establish why one
having ordinary skill in the art would have been led to the
claimed invention by the express teachings or suggestions
found in the prior art, or by implications contained in such
teachings or suggestions. In re Sernaker, 702 F.2d 989, 995,
217 USPQ 1, 6 (Fed. Cir. 1983). "Additionally, when
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