Ex parte KIRA - Page 7




              Appeal No. 96-1707                                                                                       
              Application 08/221,999                                                                                   


              heads would have dictated the exact dimensions of the gap configuration.                                 
                               REJECTION OF CLAIMS 10, 12 and 35 UNDER §103                                            

                     Claims 10, 12 and 35 are rejected under 35 U.S.C. § 103 over Otsuka in view of                    
              appellant's admitted prior art in the specification (pages 1-7 and Figures 12-16) and                    
              Jones and applied against claims 7-9, 11, 13, 14, 29-34 and 36 further in view of Nomura.                
              (See answer at pages 10-11).                                                                             
                     We disagree with the Examiner.  As discussed above, we agree with the Examiner                    
              concerning the basic combination of references and the teachings of the references.                      
                                2                                                                                      
              Claims 10 and 12  add a limitation to the claimed invention to include "a trench portion                 
              having a prescribed depth formed in a substrate on which said combined thin film                         
              magnetic head is formed."  The Examiner has argued that it would have been obvious to                    
              one of ordinary skill in the art at the time of the invention to include a groove "to prevent the        
              magneto-resistive element from directly facing the ferromagnetic material (the second                    
              lower yoke made of highly permeable film of NiFe)."  (See answer at page 10.)  Appellant                 
              argues that the trench portion is directly below the first yoke magnetic head and second                 
              yoke magnetic head.  (See brief at pages 18-21 and reply at pages 6-7.)   Furthermore,                   
              appellant argues that in claim 10, the second lower yoke is formed along the bottom of the               


                     2 We note that the Examiner indicated in the answer at pages 2-3 that an error was present in     
              claim 12, but we further note that the amendment entered February 3, 1994 deleted the word "head"        
              accidentally from claim 12 in two places in line 5 after "magnetic."                                     
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