Appeal No. 1999-2307
Application No. 08/711,074
We note that claim 1 reads as follows:
supplying said magnetic head with a signal corresponding to an information
to be magnetically recorded so as to magnetically record the information in a
first predetermined region of said magnetic track . . .
supplying said magnetic head with a second signal when said magnetic
head is located at a second predetermined region which is outside said first
predetermined region, said second signal being one of direct current and
alternating current
We note that the other independent claims 10 and 14 recite similar language. Thus, the
claims require a magnetic head for recording an information signal in one region on a
photographic head and for recording a second signal which is direct current or alternating
current on another region of said photographic film.
The Federal Circuit states 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
n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir. 1992), citing In re Gordon, 733 F.2d
900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984). It is further established that “[s]uch 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 (CCPA 1976)
(considering the problem to be solved in a determination
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