Appeal No. 2001-2262
Application 09/006,014
as claimed. The examiner also refers to the portion of Takino
which suggests a multi-channel modification [answer, pages 8-9].
Appellants respond that the examiner’s diagram establishes a
first direction which is contrary to the claimed invention.
Specifically, appellants assert that the first direction defined
by the examiner is not the direction of relative movement between
the record carrier and the magnetic head as recited in claim 11
[reply brief, page 2].
We will not sustain the examiner’s anticipation rejection of
any of the claims based on Takino. As pointed out by appellants,
the first direction defined by the examiner is indeed contrary to
the claimed invention. Since Takino does not disclose every
feature of the claimed invention, it does not anticipate the
claimed invention. Since Takino does not anticipate independent
claim 11, it also does not anticipate any of the claims which
depend therefrom.
We now consider the rejection of claims 8, 9 and 12 under
35 U.S.C. § 103(a) based on Takino taken alone. In rejecting
claims under 35 U.S.C. § 103, it is incumbent upon the examiner
to establish a factual basis to support the legal conclusion of
obviousness. See In re Fine, 837 F.2d 1071, 1073, 5 USPQ2d 1596,
1598 (Fed. Cir. 1988). In so doing, the examiner is expected to
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