Ex parte DIRNE et al. - Page 8




          Appeal No. 1999-2283                                                        
          Application No. 08/690,525                                                  


          nitrides.  As indicated at page 3 of the English translation                
          of JP ‘517, the increasing thickness of the abrasion-resistant              
          layer toward the sides of the head structure, coupled with the              
          fact that the gap is not clogged with the abrasion resistant                
          material, provides wear protection and improved performance                 
          without damaging the recording medium.  The SU ‘151 reference,              
          on the other hand, rather than providing a relatively thick                 
          two layer of wear-resistant material, attacks the wear                      
          protection problem by providing a single layer of coverage                  
          material (predominately aluminum oxide) and extending it into               
          the transducing gap.  In our view, these structural teachings               
          are so opposite in approach that any motivation to combine                  
          them must have resulted from an improper attempt to                         
          reconstruct Appellant’s invention in hindsight.  In our                     
          opinion, any suggestion to extend the two layer wear resistant              
          protective layers of JP ‘517 into the transducing gap as                    
          recited in the appealed claims could only come from                         
          Appellants’ disclosure and not from the teachings of the                    
          applied references.                                                         
               We have also reviewed the IBM 333 and IBM 1199 references              
          applied by the Examiner to address the specific recitation in               
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