Ex parte MATSUI et al. - Page 7




          Appeal No. 1998-0696                                       Page 7           
          Application No. 08/444,664                                                  


          position error signal, the position error signal having been                
          obtained from the servo area.                                               
               The examiner never explains just what portions of Brown                
          are being relied on for the teaching of adding a first offset               
          amount during a write operation and adding a second offset                  
          amount during a read operation wherein the two offsets are non-             
          zero in magnitude and of opposite directions.  The mere                     
          reference, at page 5 of the answer, to Figure 7 of Brown is                 
          insufficient to establish obviousness of the instant claimed                
          subject matter.  Later, at page 8 of the answer, in response to             
          appellants’ arguments, the examiner points to column 3, lines               
          45-50 of Brown.  While this section of Brown mentions the                   
          calculation of distance and the summing of this distance with a             
          read/write centerline offset so that an actual repositioning                
          distance can be determined, we are at a loss as to how this                 
          disclosure relates to the language of instant claim 1 and the               
          examiner has not applied this disclosure to the specific claim              
          language.  Accordingly, we find that the examiner has not                   
          established a prima facie of obviousness with regard to the                 
          subject matter of claim 1.                                                  









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