Appeal No. 1998-1632 Page 5
Application No. 08/536,045
of Yamada or Sato for manufacturing a magnetic head since it
is well known in the art that the magnetic head also employs
the same material for the magnetic material (Answer, pages 6-
7).
It is well settled that a prima facie case of obviousness
is established by showing that some objective teaching or
suggestion in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in the
art would have led that person to the claimed invention as a
whole, including each and every limitation of the claims,
without recourse to the teachings in appellant’s disclosure.
See generally, In re Oetiker, 977 F.2d 1443, 1447-48, 24
USPQ2d 1443, 1446-47 (Fed. Cir. 1992) (Nies, J., concurring);
In re Laskowski, 871 F.2d 115, 117, 10 USPQ3d 1397, 1398-99
(Fed. Cir. 1989); In re Fine, 837 F.2d 1071, 1074-76, 5 USPQ2d
1596, 1598-1600 (Fed. Cir. 1988); In re Geiger, 815 F.2d 686,
688, 2 USPQ2d 1276, 1278 (Fed. Cir. 1987). The mere fact that
the prior art could be so modified would not have made the
modification obvious unless the prior art suggested the
desirability of the modification. In re Gordon, 733 F.2d 900,
902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).
Here, we agree with appellant’s statement made on pages
13-14 of their brief, that the cited references lack any
suggestion for the modification as proposed by the examiner.
Specifically, we cannot find any suggestions in the cited
references which would have motivated one skilled in the art
to have utilized the method of Sato or Yamada to make the
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