Appeal No. 2001-1847
Application No. 08/861,157
For claim 25, the examiner (Answer, page 9) adds Prins to
the combination of Greenberg and Gold. Since Prins fails to cure
the deficiencies of the primary combination, we cannot sustain
the obviousness rejection of claim 25 over Greenberg, Gold, and
Prins.
The examiner (Answer, pages 8-9) rejects claim 22 over
Greenberg in view of Prins, pointing for motivation to combine to
Prins' teaching (column 5, lines 46-58) to eliminate the sector
ID field from the header associated with each sector to eliminate
both micro-positioning during normal write operations and also
offsetting of a duplicate header. However, Greenberg states
(column 2, lines 14-20) that the combination of the ID field and
the data field associated with a sector reduces sector overhead
(the goal of the invention) because "the one sync field and the
read/write gap eliminated are larger than the amount of
information that must be added to the ID field." Thus, the
examiner's proposed combination would eliminate the ID field that
must be modified for Greenberg's invention, thereby destroying
the function of Greenberg invention. The Federal Circuit has
held that "a proposed modification [is] inappropriate for an
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