Ex Parte Shang - Page 9

                Appeal 2007-1281                                                                             
                Application 10/104,386                                                                       
           1          Claim 1 recites the limitation, wherein a bonding area of the slider of                
           2    the reverse type of HGA is provided on the opposite side of trace                            
           3    connections for the traces.”  This limitation is unclear because Appellant’s                 
           4    Specification fails to disclose such a limitation and instead discloses that the             
           5    traces 31 are associated with (connected to) bound pads 32 (FF 4) which are                  
           6    clearly on the same side as the bump pads 41.                                                
           7          The Examiner’s position is “that Appellant’s elements 31 in Figure                     
           8    2.1 are defined in the specification as traces (page 5, line 22) not trace                   
           9    connections.  The ends of the traces are at elements 32, defined in the                      
          10    specification as bound pads (page 5, line 22)…” (Answer 4).  We agree.                       
          11          As noted above, Appellant’s Specification clearly discloses that the                   
          12    traces 31 have associated bound pads 32.  (FF 4).  As such, the “trace                       
          13    connections” can reasonably be interpreted as including the bound pads 32.                   
          14    Appellant’s Fig. 2.1 illustrates that the bump pads 41, which bond the slider                
          15    40, and the bound pads 32, which connect the traces, are positioned on the                   
          16    same side of the slider 40, not on opposite sides.  Thus, we find the language               
          17    of claim 1 to be misdescriptive of the invention.                                            
          18                                                                                                 
          19                               37 C.F.R. § 41.50(b)                                              
          20          37 C.F.R. § 41.50(b) provides that, “[a] new ground of rejection                       
          21    pursuant to this paragraph shall not be considered final for judicial review.”               
          22          37 C.F.R. § 41.50(b) also provides that the Appellants, WITHIN TWO                     
          23    MONTHS FROM THE DATE OF THE DECISION, must exercise one of the                               
          24    following two options with respect to the new ground of rejection to avoid                   
          25    termination of proceedings (37 C.F.R. § 1.197 (b) as to the rejected claims:                 



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