Ex parte KOBAYASHI et al. - Page 12




          Appeal No. 96-3614                                                          
          Application 08/259,154                                                      


          an insulation resistance sufficient to electrically insulate                
          said coil film in view of the absence of an insulating film                 
          between said magnetic film and said electrically conductive                 
          substrate."  The Diepers device does not include a substrate-               
          insulating layer and thus satisfies the claim's requirement                 
          that the magnetic film be directly formed on an electrically                
          conductive substrate.  Specifically, the lower magnet leg 7,                
          consisting of a magnetic outer layer 15 and an adjacent                     
          magnetic layer 21, is formed in a depression 13 in substrate 3              
          (col. 5, lines 11-38), which is electrically conductive (col.               
          5, lines 2-7).                                                              
               The examiner describes the deficiencies of Diepers as                  
          follows (Answer at 8): "Diepers does not expressly disclose                 
          the establishment of an equipotential between the magnetic                  
          film [which is] directly formed on the substrate [and the                   
          substrate].  Diepers does not expressly show its coil film                  
          being insulated by an organic insulating resinous film with                 
          sufficient insulation resistance."  Regarding the                           
          equipotential limitation, the examiner argues that                          
               one of ordinary skill in the art would have been                       
               motivated to furnish the magnetic head of Diepers with an              
               equipotential established between the magnetic film and                
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