Appeal No. 96-3604 Page 8
Application No. 08/383,658
exception is the case where a parameter being optimized was
not recognized to be a “result-effective variable.” In re
Yates, 663 F.2d 1054, 1057, 211 USPQ 1149, 1151 (CCPA 1981);
In re Antonie, 559 F.2d 618, 621, 195 USPQ 6, 9 (CCPA 1977).
We find this exception applies here.
In determining whether the invention as a whole would
have been obvious under § 103, we must first delineate the
invention as a whole. In delineating the invention as a
whole, we look to the subject matter recited in the claim and
to those properties of the subject matter disclosed in the
specification. Antonie, 559 F.2d at 619, 195 USPQ at 8.
Here, the invention as a whole is “decreasing the groove width
to less than 0.4 mm,” (Spec. at 11), and its disclosed
property. The property is that miniaturized magnetic heads
with this width will reduce battery consumption thereby
lengthening the “usable time of the magnetic disk apparatus.”
(Id.)
The controlling question is simply whether the
differences (namely the value of 0.4 mm and its property)
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