Ex parte NAOKI KOYAMA, et al. - Page 5




                Appeal No. 96-0775                                                                                                            
                Application 07/990,769                                                                                                        


                yes, but the question, as well as the answer, have little or no                                                               
                relevance to the claimed invention.  The answer to the question                                                               
                in ground number 3 is probably yes, but again the answer is not                                                               
                relevant to the specifically claimed invention before us on                                                                   
                appeal.  In ground number 4, a permanent magnet  may not be the                3                                              
                most appropriate transverse bias source if a variable bias source                                                             
                is needed for appellants' disclosed and claimed invention.  On                                                                
                the other hand, the other bias sources disclosed by appellants                                                                
                are assumed to be appropriate bias sources for the disclosed and                                                              
                claimed invention.  In ground number 5, we likewise fail to see                                                               
                the relevance of the shielding  question to the claimed4                                                                           
                invention.  Thus, the examiner has not provided a convincing case                                                             
                that the disclosed and claimed invention is not enabled.  The                                                                 
                lack of enablement rejection of claims 2, 3, 9 and 10 is                                                                      
                reversed.                                                                                                                     
                         Turning to the prior art rejections under 35 U.S.C.                                                                  
                 102(b), the examiner indicates (Answer, pages 5 through 7) that                                                             
                Mowry and Tanabe both disclose magnetic heads which include an                                                                

                         3See column 2, lines 26 through 33 of Mowry, and column 9,                                                           
                lines 16 through 48 of Tanabe for the use of permanent magnet                                                                 
                bias sources in connection with magnetoresistive heads.                                                                       
                         4Figure 1A of the drawing shows a magnetic shield at                                                                 
                reference numeral 2.  A brief discussion of a shield can be found                                                             
                at column 3, lines 36 through 39 of Mowry.                                                                                    
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