Appeal No. 1998-0596
Application 08/259,370
In In re Luck, 476 F.2d 650, 653, 177 USPQ 523, 525 (CCPA 1973), the Court of Customs
and Patent Appeals stated:
[I]t is well established that product claims may include process
steps to wholly or partially define the claimed product. See In
re Brown, 59 CCPA , 459 F.2d 531, 535, 173 USPQ 685,
688 (1972), and the cases cited therein. To the extent these
process limitations distinguish the product over the prior art,
they must be given the same consideration as traditional
product characteristics. (Emphasis in original).
With regard to the appellants’ claims discussed in this section, all of them require
(a) an integrated thin-film slider and transducer, and (b) a thin film suspension element
which is formed by thin film deposition. Furthermore, with regard to the thin film
suspension formed by thin film deposition, all of these claims additionally require that a
portion of the thin film suspension be deposited or formed on the integrated thin film slider
and transducer. Read in light of the appellants’ specification, particularly page 22, lines
15-16, page 23, lines 1-24, and Figure 7B, the only reasonable interpretation of these
deposition and forming limitations provides that when forming the suspension by thin film
deposition, a portion of the suspension is deposited or formed on the integrated thin film
slider and transducer. As defined by these claims, the suspension element on the one
hand and the slider and transducer on the other hand are directly connected by bonded thin
film layers thereof upon formation of the suspension element, without need for post-
formation gluing or soldering to connect the suspension element with the integral slider and
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