Appeal No. 1999-0162
Application No. 08/414,248
Appellants’ invention in hindsight.
We are further of the view that even assuming, arguendo,
that proper motivation were established for the Examiner’s
proposed combination, the resulting system would fall far
short of meeting the specific requirements of the claims on
appeal. Independent claim 26 sets forth a series of method
steps reciting a specific interrelationship of multi-disk
cartridges, a cartridge picker, and disk pickers to effect a
multi-disk cartridge exchange. The Examiner has provided no
indication as to how and where the skilled artisan might have
found it obvious to modify either of Motoyoshi or Ishibashi to
arrive at the specifics of the claimed invention.
Also, we agree with Appellants (Brief, page 18) that
neither Motoyoshi nor Ishibashi addresses inter-drive
cartridge swapping, a key requirement of independent claim 26.
In order for us to sustain the Examiner’s rejection under 35
U.S.C. § 103, we would need to resort to speculation or
unfounded assumptions or rationales to supply deficiencies in
the factual basis of the rejection before us. In re Warner,
379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967), cert.
denied, 389 U.S. 1057 (1968), reh’g denied, 390 U.S. 1000
10
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