Appeal No. 1998-0542 Page 4
Application No. 08/479,843
We reproduce the examiner’s statement of the rejection
(answer, pages 3 and 4):
Claims 1-6, 11-19 stand rejected under
35 U.S.C. [sic: §] 103(a) as being unpatentable
over Kobayashi ‘314 and optionally Otomo ‘976.
The applied Kobayashi 4,935,314 teaches one
of ordinary skill in the art to form a soft
magnetic thin film of iron containing nitrogen
in an amount of 1 to 15 at %, preferably 5 at %,
and ruthenium in an amount of .5 to 5 at %. See
all the examples in the Tables, particularly
Table 3 showing Fe- % at % N-1.5 at % Ru
exhibiting a Bs of 19.6 [KG] and a coercivity of
1 [Oe]. The examiner cannot determine the size
of the crystal grains, but given the identity in
composition, coercivity, Bs and given the low
magnetostriction constant due to adding the
interstitially soluble nitrogen atom which
suppresses crystal grain growth, the examiner
has basis for shifting the burden to applicants
to demonstrate that the crystal grains of
Kobayashi et al. are greater than 50 nm. In re
Fitzgerald 205 USPQ 594.
We point out that in a rejection under 35 U.S.C. § 103,
it is basic that all elements recited in a claim must be
considered and given effect in judging the patentability of
that claim against the prior art. See In re Geerdes, 491 F.2d
1260, 1262-63, 180 USPQ 789, 791 (CCPA 1974). Manifestly, the
examiner’s statement of rejection fails to meet that basic
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