Appeal No. 96-1890
Application No. 08/111,176
continuous,” as required by the instant claims. While the
examiner apparently agrees that Akiyama teaches alternating
magnetization directions [see bottom of page 10 of the
answer], the examiner states that Akiyama “does not teach they
must alternate.” The examiner further contends [page 11-
answer] that “since Akiyama can record alternating
transitions, it can clearly record non-alternating
transitions.”
We find the examiner’s reasoning to be faulty. While
Akiyama does not teach that the magnetic polarization
direction must alternate, it is clear that this is the only
embodiment disclosed or suggested by Akiyama. Therefore, even
if one could modify Akiyama to provide for non-alternating
transitions, as opined by the examiner, the question arises as
to why would the skilled artisan do so? Where is the
suggestion to the skilled artisan to do so, other than the
suggestion by appellants’ own disclosure? A finding of
obviousness, within the meaning of 35 U.S.C. § 103, requires
more than that one “could” modify the prior art to arrive at
the claimed subject matter. There must be a suggestion
somewhere in the prior art or within the skill and knowledge
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