Ex parte MATSUMOTO et al. - Page 5




          Appeal No. 96-0626                                                          
          Application 08/187,328                                                      


          Sernaker, 702 F.2d 989, 995, 217 USPQ 1, 6 (Fed. Cir. 1983).                
          1239 (Fed. Cir. 1995), citing W. L. Gore & Assocs. v. Garlock,              
          Inc., 721 F.2d 1540, 1548, 220 USPQ 303, 309 (Fed. Cir. 1983),              
          cert. denied, 469 U.S. 851 (1984).                                          




                    Appellants argue the following issues:                            
                    1.  Appellants assert that the Examiner has not                   
          established a prima facie case of obviousness in that no                    
          requisite motivation has been demonstrated for combining the                
          layered structure of Appellants' admitted prior art (or that                
          of Suyama) with Nakamura to obtain a silicon layer or with                  
          Hayashi to obtain a diamond-like carbon layer.  As to Hayashi,              
          Appellants argue that they have not discovered that diamond-                
          like carbon has excellent insulating properties or                          
          conductivity, but that it improves MR heads.  Further,                      
          Appellants contend that Nakamura teaches away from using                    
          silicon as an insulating layer (other than as a substrate)                  
          since Nakamura uses four insulating layers which are not                    



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