Appeal No. 1997-2848
Application No. 08/444,106
or possibilities. The mere fact that a certain thing may
result from a given set of circumstances is not sufficient.”
Id. citing Continental, 948 F.2d at 1269,
20 USPQ2d at 1749.
Similarly, we find the Examiner’s conclusion as to the
obviousness of obtaining the claimed magnetic gap inequalities
to be lacking in any evidentiary support to establish a prima
facie case of obviousness. As to the Examiner’s insistence on
a showing of criticality of the particular inequality
limitations, we find ample disclosure at pages 15 and 16 of
Appellants’ specification to support such criticality. It is
our view, however, that, absent any disclosure in the prior
art references of any relationship of gap length to side
fringe magnetic fields
or recording track width, the Examiner’s attempt to shift the
burden to Appellants to supply evidence of criticality is
misplaced. We are not inclined to dispense with proof by
evidence when the proposition at issue is not supported by a
teaching in a prior art reference, common knowledge or capable
of unquestionable demonstration. Our reviewing court requires
this evidence in order to establish a prima facie case. In re
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