Appeal No. 96-3898
Application 08/420,441
clamp connected to the hub with a screw connection in which the clamp engages the hub with a force
parallel to the axis of the hub. Appellants argue that the overhang does not, in and of itself, provide
additional force. Appellants point out that the overhang's purpose is to provide space for the sinking of
a screw head. Appellants argue that there would be no reason to modify the admitted prior art as
proposed by the Examiner.
The Federal Circuit states that "[t]he mere fact that the prior art may be modified in the manner
suggested by the Examiner does not make the modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d 1260, 1266 n.14, 23 USPQ2d 1780, 1783-
84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed.
Cir. 1984). "Obviousness may not be established using hindsight or in view of the teachings or
suggestions of the inventor." Para-Ordnance Mfg., 73 F.3d at 1087, 37 USPQ2d at 1239, citing
W. L. Gore, 721 F.2d at 1551, 1553, 220 USPQ at 311, 312-13.
We fail to find any suggestion in the prior art to modify the admitted prior art to provide a clamp
being a thermally responsive clamp connected to the hub by a thermal shrink fit, in which the clamp has
a second generally annular portion extending radially away from the hub beyond the first annular portion
and being spaced from the data disc by a distance greater than the head height to obtain Appellants'
claimed invention. Upon a careful review of Barton, we find that the purpose of the overhang shown in
Figures 3, 5, 6 through 8 is not for providing additional
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