Appeal No. 1997-4446
Application No. 08/278,151
As to the obviousness rejection, in a rejection under
35 U.S.C. § 103, it is incumbent upon the examiner to
establish
a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d
1596, 1598 (Fed. Cir. 1988). In so doing, the examiner is
required to provide a reason from some teaching, suggestion or
implication in the prior art as a whole, or knowledge
generally available to one of ordinary skill in the art, why
one having ordinary skill in the pertinent art would have been
led to modify the prior art to arrive at the claimed
invention. Uniroyal, Inc. v. Rudkin-Wiley, 837 F.2d 1044,
1052, 5 USPQ2d 1434, 1438 (Fed. Cir. 1988), cert. denied, 488
U.S. 825 (1988). These showings by the examiner are an
essential part of complying with the burden of presenting a
prima facie case of obviousness. Note In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992).
Claims 1 through 7, 9, 19 through 40, and 47 all require
storing a control signal indicating the amount of displacement
of one actuator of a magnetic recording/reproduction apparatus
and driving a second actuator according to the stored signal.
7
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 Next
Last modified: November 3, 2007