Ex parte FONTANA et al. - Page 10

              Appeal No. 1998-0596                                                                                           
              Application 08/259,370                                                                                         

              22).  Note also that from page 21, line 26, to page 22, line 1, the appellants’ specification                  
              states:  “The transducers 74 are deposited onto the substrate 90 in a row and column                           
              configuration as is shown in Fig. 4A.”  Furthermore, as is pointed out by the examiner                         
              (answer at page 11, lines 2-3), even Ainslie itself (column 4, lines 44-48) refers to its slider               
              and head assembly as a thin film slider.                                                                       
                      The appellants further argue that there is no motivation for one with ordinary skill in                
              the art “to modify the thin film suspension of Kant with the slider taught by Ainslie” (Br. at                 
              14).  The argument is misplaced.  The combination of a suspension and a slider was well                        
              known as is demonstrated by either Ainslie or Kant, and as is described in the                                 
              Background portion of the appellants’ specification.  One with ordinary skill in the art would                 
              have known to put together an alternative slider with the same suspension, or an alternative                   
              suspension with the same slider.  The examiner is correct that references may be properly                      
              combined for reasons other than those with which the appellants are concerned.  See,  In                       
              re Dillon, 919 F.2d 688, 693, 16 USPQ2d 1897, 1901 (Fed. Cir. 1990) (in banc), cert.                           
              denied, 500 U.S. 904, 111 S. Ct. 1682 (1991).                                                                  

                      Claim 46 requires that the integrated slider and transducer have an air bearing                        
              surface, which air bearing surface consists entirely of only second edge surfaces of the thin                  
              film layers of the integrated slider and transducer.                                                           


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