Appeal No. 97-1647 Page 8
Application No. 08/321,255
invention and the Murata reference address the problem of
adjusting the height between the surface of a magnetic medium
and a head in a magnetic storage system. Therefore, the
reference reasonably pertains to the particular problem with
which the appellants were involved and is analogous art.
Second, the appellants allege, “there is absolutely
nothing in the Owe et al., Murata et al. or Fechner references
to suggest combining these references to arrive at the method
and apparatus claimed by Appellants.” (Appeal Br. at 10.)
We find that the prior art as a whole would have
suggested combining Owe and Murata -- Fechner has not been
applied to claim 1 -- to obtain the claimed invention.
Obviousness can be established by combining teachings of the
prior art to produce a claimed invention only where there is
some teaching, suggestion, or incentive supporting the
combination. In re Geiger, 815 F.2d 686, 688, 2 USPQ2d 1276,
1278 (Fed. Cir. 1987). The question is whether there is
something in the prior art as a whole to suggest the
desirability of making the combination. In re Rouffet, 149
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