Ex parte BERG et al. - Page 9




             Appeal No. 96-2181                                                                                   
             Application No. 07/963,440                                                                           


             claim 1 has not been met.  "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. v. SGS Importers Int’l, Inc., 73 F.3d 1085,                                       
             1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995)(citing W. L. Gore                                        
             & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1548, 220                                           
             USPQ 303, 309 (Fed. Cir. 1983), cert. denied, 469 U.S. 851                                           
             (1984)).  We will therefore not sustain the rejection of claim                                       
             1, and thereby the rejection of its dependent claims 3 through                                       
             10.                                                                                                  
                         Remaining independent claims 11 and 19 on appeal                                        
             also contain the above limitations discussed with regard to                                          
             claim 1.                                                                                             
             Claim 11 recites “a load dimple formed in said suspension load                                       
             beam extending through said flexible signal cable and bearing                                        
             on each slider.”  Claim 19 recites “said suspension load beam                                        
             including a load dimple bearing in direct engagement with said                                       
             slider.”  Therefore we will not sustain the rejection of                                             
             independent claims 11 and 19 or the rejection of their                                               


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