Appeal No. 1999-2276
Application 08/785,802
“the first predetermined erase track width is greater than each
of said two erase track widths by said defined distance.”
When an obviousness determination is based on multiple prior
art references, there must be a showing of some "teaching,
suggestion, or reason" to combine the references. Winner Int’l
Royalty Corp. v. Wang, 202 F.3d 1340, 1348, 53 USPQ2d 1580, 1586
(Fed. Cir. 2000). The Federal Circuit further instructs that
"[t]he mere fact that the prior art may be modified in the
manner suggested by the Examiner does not make the modification
obvious unless the prior art suggested the desirability of the
modification." In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d
1780, 1783-84 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further
established that “such a suggestion may come from the nature of
the problem to
be solved, leading inventors to look to references relating to
possible solutions to that problem.” Pro-Mold & Tool Co. v.
Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626,
1630 (Fed. Cir. 1996), citing In re Rinehart, 531 F.2d 1048,
1054, 189 USPQ 143, 149 (C.C.P.A. 1976)(considering the problem
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