Appeal No. 1998-2585
Application No. 08/643,935
We now discuss the three groups of claims as elected by
Appellants (brief, page 4).
Rejection of claims 1, 2, 4, 15, 16, 18, 19, 22, 23, and
25 to 28
We first consider independent claim 1. We do not agree
with Appellants (brief, pages 6 to 8) that the Examiner is
unjustified in combining Picault and Ooyama. We have
evaluated the Examiner’s reasoning to combine (answer, pages 5
and 6) in light of the two declarations attached to the brief
and find that the combination is justified. The cost and the
conductivity referred to by the Examiner and argued by
Appellants are relative terms and are not solely conclusive to
suggest the combination of Ooyama and Picault. Picault itself
suggests the teaching to use the claimed Cu-Ti alloy (even
though there are additional elements of Fe and Co, see
abstract, it is still an alloy having Cu-Ti) as a conductor
“requiring high mechanical strength and conductivity” (col. 4,
lines 55 to 61). However, we do not agree with the Examiner
regarding the claimed electrical connection and the physical
positioning of the first layer and the second layer relative
to the back surface of the slider. If we follow, in Ooyama,
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