Appeal No. 1998-3356
Application No. 08/391,472
completely surrounding the rails on the slider are round-
chamfered except adjacent the track portion.” According to
the examiner (answer, page 6):
This so-called critical feature is only shown
in FIG. 16 of the present invention and described
on page 17, lines 13-16 (of the sub-specification),
as merely improving the resistance to the CSS
operation which “enhancing the reliability and
can accommodate high-density recording.” The
Examiner maintains that appellant has [sic, appellants
have] not sufficiently set forth on record how this
round-chamfering provides unobvious or unexpected
results, e.g., through detailed comparative testing,
showing these unobvious or unexpected results.
It is maintained that such round-chamfering,
although conceivably improving the CSS operation
of the magnetic head, would have been provided
for by a skilled artisan.
Appellants argue (reply brief, pages 4 and 5) that:
[A]ppellants are under no obligation to show
unobvious or unexpected results when the Patent
Office fails to provide a prima facie case of
obviousness. The Patent Office has the burden of
showing the obviousness of the claimed features . .
. . The Examiner’s Answer admits there is support
for the claimed feature, but then asserts that the
Patent Office does not consider this to be a
patentable distinction merely because it is only
shown in Figure 16 and described on page 17, lines
13-16. This clearly does not support a prima facie
case of obviousness as the Patent Office has never
shown the claimed feature in the prior art. The
number of times a feature is mentioned in a
specification or drawings does not determine its
patentability . . . .
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