Appeal No. 96-3604 Page 9
Application No. 08/383,658
between the prior art and the appellants’ invention as a whole
are such that the invention would have been obvious. The
answer is no. The examiner has not shown that the prior art
as a whole recognized that power consumption depends on groove
width. Recognition of this dependence is essential to the
obviousness of conducting experiments to decide the value of
the groove width that will minimize power consumption. Such
dependence can be determined from data representing the
running torque of a disk drive’s motor at varying groove
widths as revealed by the appellants. (Spec. at 9-10.) The
examiner has given us no basis for the obviousness of the
necessary experiments apart from the appellants’ disclosure
thereof.
For these reasons, the examiner failed to show that
groove width was recognized to be a result-effective variable.
Therefore, we find the examiner’s rejection does not amount to
a prima facie case of obviousness. Because the examiner has
not established a prima facie case, the rejection of claims 5
and 13 over Admission in view of Gomi is improper and is
reversed.
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