Appeal No. 1998-1658
Application 08/343,876
Appellants argue that Shimizu '178 is completely silent on
the use of a magnetic head like that used in the claimed
invention (Br10). The Examiner responds that one cannot show
non-obviousness by attacking references individually where, as
here, the rejection is based on a combination of references
(EA11). Appellants reply that they did argue against the
combination of references and are not solely arguing the
teachings of the references separately (RBr2).
We agree with the Examiner that the arguments about what is
missing from each individual reference is an attack on the
references individually. One cannot show non-obviousness by
attacking the references individually where the rejection is
based on a combination of references. In re Merck & Co.,
800 F.2d 1091, 1097, 231 USPQ 375, 380 (Fed. Cir. 1986). It is
unpersuasive to argue that Shimizu '178 does not teach a magnetic
head like that claimed when it is not being relied on for that
teaching. The lack of teachings in an individual reference is
relevant to the overall question of motivation, but we conclude
that one skilled in the art would have been motivated to combine
the head with the tape because both are used for video recording.
For the reasons discussed above, we conclude the combination
of Shimizu '178 and Shimizu '645 is sufficient to establish a
prima facie case of obviousness, which has not been rebutted.
The rejection of claims 1, 4-6, 8, and 11-13 is sustained.
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