Appeal No. 1999-0037 Page 5
Application No. 08/611,657
We begin by noting the following principles from
In re Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed.
Cir. 1993).
In rejecting claims under 35 U.S.C. Section 103, the
examiner bears the initial burden of presenting a
prima facie case of obviousness. In re Oetiker, 977
F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir.
1992).... "A prima facie case of obviousness is
established when the teachings from the prior art
itself would appear to have suggested the claimed
subject matter to a person of ordinary skill in the
art." In re Bell, 991 F.2d 781, 782, 26 USPQ2d
1529, 1531 (Fed. Cir. 1993) (quoting In re Rinehart,
531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976)).
With these principles in mind, we consider the examiner's
rejection and the appellants' argument.
Admitting, "Read-Rite Corporation does not specify an
exact location for the waist portions (shown in Figures 4 and
5, for example)," (Examiner's Answer at 6), the examiner
asserts, "[b]ecause of this, a routineer in the art would have
located the waist at a position resulting from routine
optimization and experimentation within the teachings of Read-
Rite Corporation." (Id.) The appellants argue, "routine
optimization and experimentation would not result in a slider
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