Appeal No. 1997-1174
Application 08/353,681
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. v. SGS
Importers Int’l, 73 F.3d at 1087, 37 USPQ2d at 1239, citing W.
L. Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d at 1551,
1553, 220 USPQ at 311, 312-13.
As pointed out above, we see no motivation to combine
Fennema with Christner. Although both references address the
disk art, Fennema’s track correction signal from optical
sensors has no relation to the asymmetry correction of a
magnetoresistive head signal. Since there is no evidence in
the record that the prior art suggested the desirability of
such a combination, we will not sustain the Examiner’s
rejection of independent claim 12.
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