Ex parte NAKAYAMA - Page 11




          Appeal No. 1999-2276                                                        
          Application 08/785,802                                                      


            in the I-shaped core between two magnetic cores.’ See the                 
            Abstract of Mori.                                                         
          Examiner’s Answer at page 5, line 17, to page 6, line 2.                    
               We find that the Examiner has failed to establish a prima              
          facie case of obviousness.  The plain language of Appellant’s               
          claim 1 requires the limitation of “said second grooves of said             
          erase head being formed in one of said pair of second cores                 
          which most closely adjoins said pair of first cores of said                 
          write/read head.”  (emphasis added).  Neither Appellant’s APA               
          nor Mori  teaches  or  suggests  this  structural  limitation.              
          Furthermore, considering either prior art reference singularly              
          or in combination, we do not find that this limitation would                
          have been obvious to one of ordinary skill in the art at the                
          time Appellant’s invention was made.                                        
               Because the APA and Mori lack this essential structural                
          limitation, they necessarily lack the other related limitations             
          which follow from its premise.  Specifically, neither the APA               
          nor Mori teaches or suggests that “the first predetermined                  
          write/read track width is less that said write/read track width             
          by a defined distance”; neither prior art teaches or suggests               


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