Appeal No. 1996-3814 Page 8
Application No. 08/348,835
consistently discloses that the predetermined patterns of
grooves (19, figures 9(a)and (b), and figures 8 and 10-14) are
carved into the substrate and arranged in the substrate such
that separate tracks of non-magnetized particles are not
adjacent to the magnetized particle filled grooves. Rather,
the magnetized particle filled grooves are formed such that
the substrate itself defines the walls of the grooves. This
disclosure leads us to conclude that it would not be
reasonable and consistent with the subject specification to
interpret the claimed magnetized particle filled grooves of
the substrate as seemingly urged by the examiner, namely, as
encompassing or being intuitively
obvious from the relied on alternating tracks of Marechal.
Under these circumstances, we cannot agree with the examiner's
position.
In our view, the examiner's stated rejection falls short
of presenting a prima facie case of obviousness for the
reasons set forth above. In this regard, it is well-settled
that all of the claim limitations must be considered when
weighing the differences between the claimed invention and the
prior art in determining the obviousness or nonobviousness
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