Appeal No. 1999-0264
Application No. 08/573,582
motivation for combining Nakajima and Saldanha with Kobayashi,
to "write data more efficiently," questioning any efficiency
gain from the Kobayashi system and alleging that the
motivation is unrelated to the feature for which the Examiner
relies on Kobayashi (a microprocessor). Finally, Appellants
contest the Examiner's conclusion that one of ordinary skill
in the art would have been motivated to combine the references
to come up with the instant invention.
In the Answer, the Examiner asserts that Nakajima remains
applicable to the instant invention, because numerous
references teach interchangeability between disk and tape
drives. The Examiner further asserts that Kobayashi does
indeed teach more efficient writing of data, because Kobayashi
ensures that the intended data is written into a valid
location.
As pointed out by our reviewing court, we must first
determine the scope of the claim. "[T]he name of the game is
the
claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d
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