Ex Parte GUI et al - Page 4




              Appeal No. 2000-1101                                                                Page 4                
              Application No. 08/702,325                                                                                


              combine the relevant teachings of the references to arrive at the claimed invention.                      
              See In re Fine, 837 F.2d 1071, 1074, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988) and In re                       
              Lintner, 458 F.2d 1013, 1016, 173 USPQ 560, 562 (CCPA 1972).                                              


                     All the claims under appeal require in one manner or another a lubricant over                      
              both the landing zone and the data zone of a thin film magnetic disc wherein the                          
              lubricant has been fractionated to exclude fractions of high molecular weight relative to                 
              molecular weights of the lubricant prior to fractionation.                                                


                     In the rejection before us in this appeal, the examiner (1) set forth teachings of                 
              the applied prior art (answer, pp. 3-4); and (2) determined that it would have been                       
              obvious to one of ordinary skill in the art to (a) use a purified lubricant as taught by                  
              Ohnuki on Gonnella's magnetic disc, and (b) use carbon dioxide to purify Ohnuki's                         
              lubricant as suggested by the Polymer Science Encyclopedia (answer, pp. 4-5).1                            


                    Based on our analysis and review of Gonnella and the claims under appeal, it is                    
              our opinion that one difference is the limitation that the lubricant over both the landing                
              zone and the data zone of the thin film magnetic disc has been fractionated to exclude                    


                     1 The examiner did not ascertain the differences between the prior art and the claims at issue or  
              determine that the claimed subject matter would have been obvious at the time the invention was made to   
              a person of ordinary skill in the art.                                                                    






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