Appeal No. 97-2287
Application No. 08/299,128
Assuming arguendo that the concave portions are
not inherent in Bloemendaal, then it would have been
obvious to one of ordinary skill in the art at the
time the invention was made to modify Bloemendaal by
substituting its film with a film containing concave
portions because this is deemed a mere substitution
of art recognized equivalents, and hence, an
alternative embodiment without producing new and
unexpected results is obtained . . . .
Furthermore, assuming arguendo that the now
modified system does not contain concave portions
which are smaller than the recited dimension of the
edge following surface, it would have been obvious
to increase the size - the length - of the edge
following surface to improve the tracking ability of
the head (16) upon playback of the recorded signal
(14) . . . .
Appellant argues (Amended Reply Brief, pages 2 and 3)
that:
For the inherency doctrine to be applicable to
the instant rejection, it must be the case that the
Bloemendaal et al. reference is only directed to the
type of film with concave portions along the edge.
Bloemendaal et al. does not disclose film with
concave portions, and the Examiner admits this.
(Paper No. 6, page 5, lines 6-7). However, the one
type of film that Bloemendaal et al. does show is
straight-edged, i.e., has no concave portions.
Thus, inherency cannot legally be used to import
non-disclosed film having concave portions.
Furthermore, assuming arguendo that films with
concave portions were disclosed in the Bloemendaal
et al. reference, inherency cannot legally be used
to allege that the edge follower must be longer than
concave portions, since there is no showing of
4
Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: November 3, 2007