Ex parte COMSTOCK et al. - Page 10




          Appeal No. 97-2035                                                          
          Application 08/161,234                                                      


          was known that the disk can be grounded to the base through                 
          the spindle.                                                                
               Claims 4 and 15, however, additionally recite that the                 
          slider’s conductive coating has a tapered thickness beginning               
          in the proximity of the transducer and increasing thickness                 
          toward the leading edge facing into the direction of disk                   
          rotation.  The applicants argue that none of the references                 
          disclose or suggest this feature as recited in claims 4 and                 
          15.  (Brief at 10 and 11).  The examiner addressed the                      
          appellants’ remarks by stating:                                             
               The examiner maintains that the tapering of the                        
               conductive coating would have been within the common                   
               knowledge of one of ordinary skill in the art at the time              
               the invention was made.  Because most all sliders “fly”                
               with a slight angle with respect to the disk, tapering                 
               the coating would help prevent contact between the disk                
               and the slider at the rear of the slider.  (Answer at 8).              
               The examiner’s reasoning is conclusory.  The examiner has              
          provided no evidence to support the assertion that tapering                 
          the coating on the surface of the slider would have been                    
          within the common knowledge of one having ordinary skill in                 
          the art.  On this record, tapering the coating is a feature                 
          suggested only by the applicants’ own disclosure.                           


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