Ex parte FONTANA et al. - Page 12

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

              and Ainslie’s slider assembly to make the rejection.  Accordingly, the structure of Ainslie’s                  
              slider is important.  As can be seen in Ainslie’s Figure 4, an exploded cross-section side                     
              view of Ainslie’s thin film slider, the bottom portion forming an air bearing surface is indeed                
              a collection of the edges of the thin films.  While Ainslie’s air bearing surface may                          
              comprise of portions which are not edges of thin films, claims 46, 47, 49 and 50 do not,                       
              contrary to appellants’ argument (Br. at 19), require that the air bearing surface of the slider               
              be “composed entirely of edges of thin films.”                                                                 
                      Thus, we affirm the rejection of claim 46.                                                             
                      With regard to claim 47, first the appellants reiterate what it recites and then                       
              conclude, without any meaningful explanation, that it distinguishes over the prior art.                        
              Merely pointing out what a claim recites, however, does not establish patentable distinction                   
              over the prior art.  The appellants also state that claim 47 is further distinguished over the                 
              references for the same reasons as given in support of claim 26.  The argument is rejected                     
              because the features particularly recited in claim 26 and argued specifically by the                           
              appellants are not recited in claim 47.  Note that while claim 26 requires the thin film lead                  
              layers of the thin film transducer to be connected to the thin film conductor leads of the thin                
              film suspension by thin film deposition, claim 47 has no such requirement.  Claim 47 does                      
              not preclude connection by conventional means, i.e., solder.  Accordingly, we affirm the                       
              rejection of claim 47.                                                                                         
                      The appellants argue that claim 49 is patentable for the same reasons claim 47 is                      


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