Appeal No. 2001-2565 Page 4
Application No. 09/173,497
ordinary skill in the art . . . would have been motivated to provide the head assembly of
Barnes with charge plates as taught by Koshikawa et al in lieu of the superconductor
taught by Barnes since the charge plates do not require the disk drive to be cooled to
the operating temperature of a superconductor." (Examiner's Answer at 4.) The
appellant argues, "the Examiner has used the instant application as a template and has
employed impermissible hindsight in order to piece together the teachings of the prior
art in order to construct Appellant's invention." (Appeal Br. at 6.)
"[T]o establish obviousness based on a combination of the elements disclosed in
the prior art, there must be some motivation, suggestion or teaching of the desirability
of making the specific combination that was made by the applicants." In re Kotzab, 217
F.3d 1365, 1370, 55 USPQ2d 1313, 1316 (Fed. Cir. 2000) (citing In re Dance, 160 F.3d
1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir. 1998); In re Gordon, 733 F.2d 900, 902,
221 USPQ 1125, 1127 (Fed. Cir. 1984)). Furthermore, "prior art references . . . must
be read as a whole and consideration must be given where the references diverge and
teach away from the claimed invention." Akzo N.V. v. U.S. Intn'l Trade Comm'n, 808
F.2d 1471, 1481, 1 USPQ2d 1241, 1246 (Fed. Cir. 1986) (citing W.L. Gore & Assocs. v.
Garlock, 721 F.2d 1540, 1550, 220 USPQ 303, 311 (Fed. Cir. 1983)).
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