Appeal No. 2005-2731 7
Application No. 10/656,040
disclosures pointed to in the applied patents, the examiner concludes that it would have
been obvious to one of ordinary skill in the art at the time of appellant’s invention to have
the housing dimensions of Kulakowski’s HDD coincide with the housing dimensions of a
magnetic tape cartridge, as taught by Stefansky, “since it has been held that discovering
an optimum value of a result effective variable involves only routine skill in the art”
(answer, page 4).
In addition, the examiner urges that it would have been obvious for one of ordinary skill
in the art to have provided Kulakowski’s HDD with a housing having the same dimension
as a magnetic tape housing “because such HDD cover had been known in the art, as
demonstrated by Stefansky ‘412”. The examiner further contends that
[s]ince Stefansky ‘412 modified apparatus and docking device is designed to
handle storage media having tape cartridge form factor, it is obvious that the
apparatus and the docking device is also capable of handling any tape
cartridges” (answer, page 4).
After a review of the applied patents, even if we were to agree that Stefansky teaches a
hard disk drive cartridge having a tape cartridge form factor (see, e.g., col. 3, lines 1-3), we
agree with appellant that there is nothing in either Kulakowski or Stefansky which would
have led one of ordinary skill in the art to modify the dual-ended hard disk drive cartridge
(2) of Kulakowski to necessarily have a tape cartridge form factor, since Stefansky gives
no reason for having a hard disk drive cartridge configured to have a tape cartridge form
factor. Moreover, even if such a modification were to be made in Kulakowski, we agree
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