Appeal No. 1998-2518
Application No. 08/442,835
particular tape is identified by a code such as a bar code
read by a scanner coupled to a controller. Appellants contend
(Brief, page 13) that Strubbe does not disclose using program
start information recorded on the tape for preventing
overwriting of stored programs (by indicating when an erase
head and program recording means should stop erasing and
recording, respectively). In other words, according to
appellants, even if the program start positions of Lewis were
added to Kosaka, none of the references suggest using the
markers during recording to prevent overwriting.
We agree with appellants. The Federal Circuit states
that "[t]he mere fact that the prior art may be modified in
the manner suggested by the Examiner does not make the
modification obvious unless the prior art suggested the
desirability of the modification." In re Fritch, 972 F.2d
1260, 1266 n.14, 23 USPQ2d 1780, 1783-4 n.14 (Fed. Cir. 1992),
citing In re Gordon, 733 F.2d 900, 902, 221, USPQ 1125, 1127
(Fed. Cir. 1984). In the present case, there is no teaching
or suggestion in any of the references to use program start
markers to prevent overwriting, and, therefore, no suggestion
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