Appeal No. 1998-1632 Page 6
Application No. 08/536,045
magneto-resistance film of Chaug or Fontana. In this context,
we strongly disagree with the examiner’s reasoning that the
teachings of Chaug or Fontana of using a NiFe material in
making a magneto-resistance film are sufficient motivation to
utilize the process of Sato or Yamada in making a magneto-
resistance film. As pointed out by appellant, one seeking to
provide an improved magneto-resistance effect thin film or
head would not look to Sato or Yamada because neither of these
references are directed to making these types of films.
Furthermore, these references teach the forming of a film
having a high coercive force property, which is detrimental to
a magneto-resistance effect thin film. (Brief, page 11). The
examiner never addresses these particular issues raised by
appellant. These circumstances lead us to conclude that the
examiner, in making his Section 103 rejection, has fallen
victim to the insidious effect of hindsight syndrome wherein
that which only the inventor has taught is used against its
teacher. W.L. Gore & Assocs. V. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984).
Hence, we reverse the rejection of record.
CONCLUSION
To summarize, the decision of the examiner to reject
claims 1-14 under 35 U.S.C. § 103 is reversed.
REVERSED
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