Appeal No. 1997-0678
Application 08/406,768
motivated to make the whole magnetic disk surface of Pollard,
that is, both the start-stop area and the data storage area,
with a radial downslope toward its outer edge to achieve the
advantages taught by Mizuno.
The question is whether one of ordinary skill would have
been led to make the start-stop area with a radial downslope
and the data storage area without a radial downslope when
Mizuno teaches making the whole surface with a radial
downslope. This is essentially Appellants' third argument
(Br9, Sec. C). The Examiner's response (EA8-9) does not
answer this key question, but merely concludes that the
combination of references renders the claimed subject matter
obvious. The Examiner concludes that it would have been
obvious to modify the start-stop area in Pollard to have a
radial downslope (EA5), but does not explain why the data
storage area should remain flat when Mizuno shows the whole
surface with a radial downslope. We find no teaching or
suggestion in Mizuno of making only part of the disk with a
decreasing thickness. In the absence of some teaching or
suggestion in the references or some convincing line of
reasoning by the Examiner, we conclude that the Examiner has
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