Appeal No. 1998-0200
Application No. 08/698,193
materials. Nor does Jeffers refer to the patent for examples of other materials suitable for use as the
intermediate layer. Thus, the only explicit disclosure in Jeffers is of a layer having relatively high
magnetic permeability.
We agree with appellants that Jeffers would not have suggested to the artisan to employ a
material having relative magnetic permeability in or about the range as set forth in appellants’ Claim 12.
The reference appears to suggest increasing the relative magnetic permeability of the intermediate layer
(see, for example, column 1, lines 37 through 57 of Jeffers), rather than decreasing the permeability --
moving toward a relatively low relative magnetic permeability -- for maximizing sensitivity of the
magnetic head. Absent additional evidence of an art-recognized reason for moving toward a relatively
low permeability, a rejection for obviousness over Jeffers appears to be a hindsight reconstruction of
appellants’ invention. After all, according to appellants’ specification, appellants were not optimizing
the permeability of the intermediate layer, nor optimizing the sensitivity of the magnetic head.
Appellants chose a range of relatively low permeability of the intermediate layer for reasons
unrecognized by the prior art before us -- for easier construction of the intermediate layer -- yet with
acceptable, although sub-optimal, magnetic permeability.
Since the reference fails to support a prima facie case of obviousness of the claimed subject
matter, we do not sustain the rejection of Claims 2-6, 9-12, and 15-17 under 35 U.S.C.
§ 103 as being unpatentable over Jeffers.
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