Ex parte MATSUMOTO et al. - Page 10




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


          (Appellants' claim 1 line 5) the magnetoresistive element 10                
          of Yoda, the only missing limitations are the electrical                    
          resistivity and thermal conductivity claimed.  Since                        
          Appellants' specification, at TABLE 1 page 10, acknowledges                 
          that currently used insulators meet the claimed electrical                  
          resistivity, little or no experimentation or optimization                   
          would be needed to meet this parameter.  As to the claimed                  
          thermal conductivity, Yoda recites that a diamond film is more              
          effective because of its excellent heat conductivity.  It                   
          would have been obvious to one of ordinary skill in the art at              
          the time of invention to have optimized this property and                   
          achieved the claimed thermal conductivity.  As noted supra,                 
          determining the optimal values of result effective variables                
          would have been obvious and ordinarily within the skill of the              
          art.  In re Boesch.                                                         
                    Claim 12 is rejected under 35 U.S.C. § 103 as                     
          unpatentable over Yoda in view of Suyama.  Yoda teaches the                 
          claimed invention as noted supra with respect to claims 1 and               
          3.  However, Yoda does not recite that the "magnetoresistive                
          element has a width approximating a height" (Appellants' claim              



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