Appeal No. 2002-0471
Application 09/277,862
In order to establish a prima facie case of obviousness, the examiner must show that some
objective teaching, suggestion or motivation in the applied prior art taken as a whole and/or
knowledge generally available to one of ordinary skill in this art would have led that person to
the claimed invention as a whole, including each and every limitation of the claims, without
recourse to the teachings in appellants’ disclosure. See generally, In re Rouffet, 149 F.3d 1350,
1358, 47 USPQ2d 1453, 1458 (Fed. Cir. 1998); Pro-Mold and Tool Co. v. Great Lakes Plastics
Inc., 75 F.3d 1568, 1573, 37 USPQ2d 1626, 1629-30 (Fed. Cir. 1996); In re Fine, 837 F.2d 1071,
1074-76, 5 USPQ2d 1596, 1598-1600 (Fed. Cir. 1988); In re Dow Chem. Co., 837 F.2d 469,
473, 5 USPQ2d 1529, 1531-32 (Fed. Cir. 1988). The requirement for objective factual
underpinnings for a rejection under § 103(a) extends to the determination of whether the
references can be combined. See In re Lee, 277 F.3d 1338, 1343, 61 USPQ2d 1430, 1433-34
(Fed. Cir. 2002), and cases cited therein.
As an initial matter, we find that, when considered in light of the written description in
the specification as interpreted by one of ordinary skill in this art, see, e.g., In re Morris, 127
F.3d 1048, 1054-55, 44 USPQ2d 1023, 1027 (Fed. Cir. 1997), the plain language of appealed
claim 1 encompasses a method for producing positive camber on the air bearing surface (ABS) of
a slider comprising at least the specified three steps, the first of which is “scribing lines on the air
bearing surface side of a slider row between individual sliders in the slider row.” The dispute in
this appeal centers on whether one of ordinary skill in this art would have found in the combined
teachings of Deshpande and Toyoda the reasonable suggestion to modify the process of
Deshpande by inserting the step of scribing lines of the ABS side of a slider row in the manner
taught by Toyoda in the reasonable expectation of producing positive camber on the ABS of an
individual a slider.
The examiner takes the position that because Toyoda teaches scribing lines on the ABS
side of a slider row as well as on the reverse or back side thereof in the language “[s]cribe lines
may be formed in only one surface in place of forming them in both the [ABS] and [back side]
surfaces” and “[f]or example, scribe lines 4 are formed in only the” back side (col. 4, lines
17-60), this disclosure would have reasonably suggested to one of ordinary skill in this art to
form scribe lines solely on the ABS side of the slider row (answer, page 3). Based on this
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Last modified: November 3, 2007