JURGENSON et al. V. DUNFIELD et al. - Page 10



          Interference 104,530                                                        
          Jurgenson v. Dunfield                                                       
          located on the rigid region of the load beam (Paper 86 at 10-               
          11).                                                                        
               27.  Dunfield does not dispute that the microactuator                  
          located on the rigid region of the load beam is a material                  
          limitation.                                                                 
               28.  The parties agree that there are generally three                  
          regions that comprise a load beam: (1) the rigid region; (2)                
          the mounting region; and (3) the spring region (Paper 84 at 6               
          and Paper 86 at 6).                                                         
                                 The Panels Order                                     
               29.  Oral argument on preliminary motions was held April               
          20, 2001.                                                                   
               30.  On May 14, 2001, an order was issued, inviting the                
          parties to provide comments regarding two issues (Paper 83).                
               31.  The first issue is whether Dunfield’s claims 1, 2,                
          9, and 11 from its parent application (08/438,091) are to the               
          same or substantially the same subject matter as Dunfield’s                 
          involved claims 40 and 41.                                                  
               32.  The second issue is whether a decision on the                     
          remaining preliminary motions is necessary if it is                         
          determined that Dunfield’s claims 40 and 41 are barred under                
          35 U.S.C. § 135(b).                                                         

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