Ex Parte BANG - Page 5




          Appeal No. 2001-1847                                                        
          Application No. 08/861,157                                                  


          term, displacement, for other information suggests that                     
          displacement differs from synchronization.  Accordingly, we agree           
          with the examiner that Greenberg discloses the first subpart of             
          the data information containing all of the synchronization                  
          information, and, thus, that claim 1 is anticipated by Greenberg.           
               We reach a different conclusion for the obviousness                    
          rejections.  As to the rejection of claims 2, 3, and 17 through             
          26, the examiner explains (Answer, page 4) that although                    
          Greenberg fails to teach the second subpart of the data region              
          including a data address mark, Gold discloses such a mark.  The             
          examiner contends that "[i]t would have been obvious ... to                 
          modify the teachings of Greenberg et al to include the teachings            
          of Gold, motivation being to provide an improved disk format as             
          set forth in col. 2 lines 45-48 of Gold."                                   
               After reviewing the referenced portion of Gold we find no              
          nexus between the inclusion of a data address mark and the                  
          "improved disk format."  In fact, we find no suggestion or                  
          motivation in either reference to add the claimed data address              
          mark to the second subpart data region of Greenberg.                        
          Consequently, we cannot sustain the obviousness rejection of                
          claims 2, 3, and 17 through 26 over Greenberg in view of Gold.              





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