Ex parte WAUGH et al. - Page 7




               Appeal No. 1997-3923                                                                                                
               Application 08/212,203                                                                                              


               scaling factor, finding a demand velocity) as discussed above are neither taught nor would have been                

               suggested by Edel and Lee, we find that the examiner has failed to make a prima facie case that Edel in             

               view of Lee would have taught or suggested the method of reducing target track seek time as defined in              

               representative independent claim 1 on appeal.                                                                       

                       With respect to independent claim 5, we cannot sustain the rejection of this claim for the same             

               reasons discussed above with respect to representative claim 1, since claim 5 contains similar                      

               limitations.                                                                                                        

                       With respect to dependent claims 2 and 6, we cannot sustian the rejections as to these claims               

               for at least the same reasons discussed above with respect to independent claims 1 and 5 from which                 

               they depend.                                                                                                        

                       With respect to dependent claims 3, 4, and 7, we find that while DuVall does teach using a                  

               square root of velocity in calculating correction signals for a magnetic disc transducer, DuVall fails to           

               provide for the deficiencies of Edel and/or Lee with respect to the determination and use of a maximum              

               actuator current, generating a scale factor based on the measured actuator current and a nominal                    

               actuator current, and scaling a profile velocity with the scale factor to generate a demand velocity as             

               required by representative claim 1.  Accordingly, we cannot sustain the rejection as to dependent                   

               claims 3, 4, and 7 for at least the same reasons discussed with respect to independent claims 1 and 5.              

                       For the foregoing reasons, the rejections of claims 1 to 7 under 35 U.S.C. § 103 as being                   


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