Appeal No. 1997-1321
Application No. 08/366,448
sliders before appellants’ invention (Brief, page 7).
Although the grooves in each of the references is made by
a chemical etching process, the examiner nevertheless
concludes (Answer, pages 15 and 16) that a strain would be
induced in each of the sliders.
If the examiner has met his initial burden of presenting
a prima facie case of unpatentability, then the burden of
coming forward with evidence or argument shifts to applicants.
In re Oetiker, 977 F.2d 1443, 1445, 24 USPQ2d 1443, 1444 (Fed.
Cir. 1992). Thereafter, the ultimate determination of
patentability is made on the entire record. In re Piasecki,
745 F.2d 1468, 1472, 223 USPQ 785, 788 (Fed. Cir. 1984). In
rebuttal to the examiner’s prima facie case of
unpatentability, appellants provided a copy of an excerpt from
Metals Handbook, Ninth Edition, Vol. 16, page 583, which
clearly states that chemical milling of the surface of a
material does not induce stress in the material because
“neither mechanical deformation nor exposure to high
temperatures is involved.”
In the absence of any evidence in the record that states
otherwise, we must agree with appellants that the evidence in
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