Appeal No. 1999-0063
Application No. 08/602,366
(Answer, page 4) that the skilled artisan would be led to
modify Yoshioka by the desire to reduce the travel speed of
the tape medium as stated in the Abstract of Inazawa. We
agree with Appellants, however, that the Examiner’s line of
reasoning is devoid of any indication as to why one would want
to reduce tape travel speed in Yoshioka. To the contrary, our
review of Yoshioka reveals that the object of the Yoshioka’s
invention is to increase speed of access to information on the
tape medium (Yoshioka, Abstract, column 6, lines 48-53).
We further agree with Appellant that, even assuming
arguendo that the skilled artisan would be motivated to
combine Yoshioka with Inazawa, such a proposed combination
would not result in the invention as claimed. First of all,
we find no indication in the Answer as to how and where the
tape positioning technique of Inazawa would be utilized in the
system Of Yoshioka to arrive at the claimed invention.
Secondly, our interpretation of the disclosure of Inazawa
coincides with that of Appellant, i.e. the tape in Inazawa
travels back and forth over the target position rather being
positioned at a location between the target and present
positions as recited in Appellant’s claims. Further, even
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