Ex Parte BANG - Page 7




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


          obviousness inquiry when the modification render[s] the prior art           
          reference inoperable for its intended purpose." In re Fritch, 23            
          USPQ2d 1780, n. 12, citing In re Gordon, 733 F.2d 900, 902, 221             
          USPQ 1125, 1127 (Fed. Cir. 1984).  Accordingly, we cannot sustain           
          the obviousness rejection of claim 22 over Greenberg in view of             
          Prins.                                                                      
               Regarding the obviousness rejection of claims 4 and 7                  
          through 14 over Park in view of Greenberg, appellant argues that            
          Park fails to disclose the claimed servo timing generator (see              
          Brief, pages 10-13), the claimed mode selection signal generator            
          (see Brief, pages 13-16), and the claimed pre-amplifier and                 
          read/write channel circuit (see Brief, pages 16-19).  Appellant             
          further challenges the combination of Park and Greenberg (see               
          Brief, page 19).  Although we do not necessarily agree with all             
          of appellant's arguments, for the reasons which follow, we agree            
          at least that Park fails to disclose the claimed mode selection             
          signal generator, that Greenberg fails to remedy this                       
          shortcoming, and that the claims, therefore, would not have been            
          obvious over the combination of Park and Greenberg.                         
               Claim 4 recites, in pertinent part, "a mode selection signal           
          generator coupled to receive said read gate input signal and said           




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