Ex Parte CHEN et al - Page 3



          Appeal No. 1999-2280                                                        
          Application No. 08/686,567                                                  

          2, 4, 6 through 14, 16, 18 through 24, 26 and 28 through 30, and            
          the 35 U.S.C. § 103(a) rejection of claims 3, 5, 15, 17, 25, 27             
          and 31.                                                                     
               The examiner makes the point (answer, page 8) that:                    
                    Clearly and without question, Kubo et al (US                      
               5,198,934) discloses a planarized silicon coating                      
               ((39); see COL. 5, line 4) is provided on at least a                   
               portion of the air bearing surface.  More specifically,                
               Kubo et al (US 5,198,934) discloses the coating as                     
               silicon dioxide.  Silicon dioxide, contains silicon.                   
               Moreover, the claims are open ended, containing the word               
               “comprising.”  Thus other coatings and/or compounds of                 
               silicon are not in any way excluded from the claimed                   
               invention.                                                             
               Appellants argue (brief, page 6) that:                                 
                    Claims 1, 11 and 20 each include the feature of a                 
               slider having an air bearing surface coated with a                     
               silicon coating for protecting the air bearing surface.                
               None of the prior art references of record in the                      
               present case, either alone or in reasonable                            
               combination, teach or suggest an apparatus as defined                  
               by claims 1, 11 and 20.  For example, at col. 5, line                  
               4, the Kubo et al. reference discloses using a coating                 
               material such as silicon dioxide, as opposed to the                    
               elemental silicon.                                                     
               If Kubo had a “silicon” coating on an air-bearing surface of           
          a slider, then the open-ended nature of appellants’ claims would            
          not preclude other coatings (e.g., silicon dioxide) on the air-             
          bearing surface.  Since Kubo discloses the use of a silicon                 
          dioxide coating on an air-bearing surface of a slider, and not a            
          silicon coating, the examiner’s open-ended claim statement is               
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