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 3Page: Previous 1 2 3 4 5 6 NextLast modified: November 3, 2007