Ex parte DOHMEN - Page 7




          Appeal No. 95-5146                                                          
          Application 08/152,557                                                      


          said resin (7) does not make contact with the magnetic tape (5),            
          and are formed as concave areas (2b) and (2b) as indicated in               
          Figure 3" [translation, page 8, underlining added].  Thus, it is            
          clear to us that indentations 2b simply represent areas where               
          material from the conventional magnetic head has been removed to            
          reduce the amount of frictional contact between the head and the            
          tape.  Therefore, we agree with appellant that indentations 2b of           
          Kimura are not properly considered cleaning grooves with a                  
          scraping edge as recited in the claims.                                     
          Even if we were to assume that the edges of Kimura’s                        
          indentations 2b might frictionally scrape the surface of the                
          magnetic tape at these edges, the specific dimensions of the                
          cleaning groove recited in claim 20 would not have been obvious             
          in view of the teachings of the applied prior art.  The examiner            
          considers the specific dimensions to be the result of routine               
          design experimentation.  Since Kimura designs indentations 2b to            
          reduce the surface contact between the head and the tape and not            
          to provide a scraping edge, the factors leading to the dimensions           
          of Kimura’s indentations 2b are totally unrelated to the factors            
          leading to the design of a cleaning groove.  Since Kimura’s                 
          indentations are designed for an entirely different purpose, we             
          agree with appellant that the specific dimensions of claim 20               

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