Appeal No. 96-1707
Application 08/221,999
trench. We agree with the appellant that the Examiner has made assertions which are not
clearly supported by the teachings of Nomura as to why it would have been obvious to one
of ordinary skill in the art at the time of the invention to form the trench/groove beneath both
heads in the configuration as claimed. Nomura does not teach skilled artisans that a
trench is useful in preventing leakage due to magnetic flux in the linear/planar configuration
as set forth in the language of claims 10 and 12.
Since all the limitations of claim 12 are not taught or suggested by the applied prior
art, we cannot sustain the Examiner's rejection of appealed claim 35 which depends
therefrom, under 35 U.S.C. § 103.
RESPONSE TO ARGUMENTS
Appellant argues that the rejection of the claims lacks motivation to combine the
teachings of the references. (See brief at page 9.) We disagree. Appellant argues that
the rejection of the claims uses improper hindsight reconstruction in the motivation to
combine the teachings of the references. (See brief at page 10.) We disagree.
Appellant argues that the rejection of the claims is unclear as to the Examiner's basis for
the "compactness" rationale. (See brief at page 11-12.) We disagree and have further
elaborated upon the line of reasoning used in the combination of the teachings/references.
(See above.) Jones teaches and motivates skilled artisans to form the head structure
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