Appeal No. 2003-0487
Application No. 09/158,925
the circuit shown in figure 6 does eliminate crosstalk, there is no disclosure that the
circuit determines phase error and uses the phase error to generate a clock. Inasmuch
as the examiner’s statement on page 5 of the answer implies that Iwanaga’s error signal
detection circuit 32 is the equivalent to the phase detector, we do not find this
equivalence to be proper. Iwanaga teaches, on page 7 of the translation, that the error
signal detection circuit provides an output to the variable filter control circuit to adjust the
frequency characteristics of filters items 26 through 28. The only discussion we find in
Iwanaga’s disclosure of a reading signal being used to generate a timing signal is on
page 6 of the translation and this is in relation to item 23, which figure 6 shows receives
a signal read from the medium before the cross talk is removed.
Further, we do not find that either the prior art or Iwanaga provides motivation to
make the claimed invention. It is the burden of the examiner to establish why one
having ordinary skill in the art would have been led to the claimed invention by the
express teachings or suggestions found in the prior art, or by the implication contained
in such teachings or suggestions. In re Sernaker 702 F.2d 989, 995, 217 USPQ 1, 6
(Fed. Cir. 1983). “Additionally, when determining obviousness, the claimed invention
should be considered as a whole; there is no legally recognizable “heart’ of the
invention.” Para-Ordnance Mfg. Inc. v. SGS Importers Int’l Inc., 73 F3d 1085, 1087,
37 USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W.L. Gore & Assocs., Inc. Garlock, Inc.,
721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984)). We find that the motivation provided by the examiner to combine the
references is unsupported by the evidence made of record. Appellants’ admitted prior
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