Appeal No. 96-4001
Application 08/246,805
Ashland Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 293, 227 USPQ 657, 664 (Fed.
Cir. 1985), cert. denied, 475 U.S. 1017 (1986); ACS Hosp. Sys., Inc. v. Montefiore Hosp., 732 F.2d
1572, 1577, 221 USPQ 929, 933 (Fed. Cir. 1984). These showings by the Examiner are an essential
part of complying with the burden of presenting a prima facie case of obviousness. Note In re Oetiker,
977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
With respect to representative independent claim 1, as the basis for the obviousness rejection,
the Examiner has proposed to modify Seko by adding the position and velocity control features of
Bradshaw and, in the Examiner's view, the polarity reversing features of Blum. In response, Appellant
(Brief, pages 9 and 10) has attacked the alleged deficiency of Blum in disclosing the claimed polarity
reversal of bits. The relevant portion of representative claim 1 recites:
wherein said transition defines a first
half and a second half of said each of
said digital mark patterns, said bits of
said first half being reversed in polarity
relative to said bits of said second half.
The Examiner has taken the position (Answer, page 4) that, starting with the assumption that a "1" is a
bit pattern of one polarity and a "0" is a bit pattern of opposite polarity, if the order of bits are reversed,
the resulting bit pattern in a trailing/leading field of Blum would be reversed in polarity relative to the
leading/trailing field. Appellant has responded (Reply Brief, page 2) with the contention that the
Examiner's assumption as to the relationship of polarity to bit value is incorrect. Appellant argues that,
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