Appeal No. 1998-0200
Application No. 08/698,193
New Ground of Rejection -- 37 CFR § 1.196(b)
We enter the following new ground of rejection against the claims in accordance with
37 CFR § 1.196(b): Claims 16 and 17 are rejected under 35 U.S.C. § 112, second paragraph as
being indefinite.
Appellants’ Claim 16 recites a “method of manufacturing the magnetic head having a
magnetoresistive element and a flux-guiding element as recited in Claim 12....” Although Claim 16 is
technically an independent claim -- drawn to subject matter in a different statutory class from that of
Claim 12 -- we interpret the claim as incorporating all the limitations of Claim 12.
The last three lines of Claim 16 recite that the intermediate layer is “characterized in that said
intermediate material is deposited on said layer of electrical insulating material until the relative magnetic
permeability thereof is between 1.1 and 25.” The recitation “said intermediate material” lacks proper
antecedent in the claims. Assuming that the recitation should be “said intermediate layer” (or “said
electrical insulating material”), then the claim recites that the intermediate layer (or the electrical
insulating material) is deposited on the layer of electrical insulating material “until the relative magnetic
permeability thereof is between 1.1 and 25.” By either interpretation, the claim recites that a layer or
material is deposited on itself, which does not particularly point out and distinctly claim the invention.
On the other hand, one might assume that the recitation was intended to mean that the electrical
insulating material is deposited on the flux-guiding element “until the relative magnetic permeability
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