Appeal No. 2002-0471
Application 09/277,862
disclosure, the examiner concludes that one of ordinary skill in this art would have modified the
method of Deshpande by scribing lines on the ABS side of the slider row with the expectation of
reducing “surface stress along the scribe lines in order to reduce deformation along the length of
the slider row . . . because both references teach similar processes and end-products” (id., pages
3-4).
Appellants submit that the method of Deshpande includes a step for producing stress on
the back side of the slider row but not on the ABS side thereof and does not teach the manner in
which the slider row is separated or diced into individual sliders, and that “Toyoda specifically
teaches that to achieve positive camber on a slider, the back side of the slider should be scribed”
(brief, pages 4-5). Thus, appellants argue that “[t]he combined teachings of Deshpande and
Toyoda would teach one skilled in the art to scribe lines on the back side of the slider to achieve
positive camber,” and therefore the claimed method including the step of scribing the ABS side
is not rendered obvious by the combination of references (id., page 5).
The examiner responds that Toyoda teaches “producing a stress pattern on the ABS side
of the slider by forming scribed lines (col. 4, lines 20-42)” (answer, page 6), and because this
reference teaches forming scribe lines on both the ABS side and the back side, and, “[f]or
example,” on only the back side, the reference as a whole would have suggested forming scribe
lines on the ABS surface as well (id., pages 6-7). We note here that in the passage cited by the
examiner, Toyoda discusses a method wherein both the ABS side and the back side of the slider
row are scribed.
It is well settled that a reference stands for all of the specific teachings thereof as well as
the inferences one of ordinary skill in this art would have reasonably been expected to draw
therefrom, see In re Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir.
1992); In re Preda, 401 F.2d 825, 826, 159 USPQ 342, 344 (CCPA 1968), presuming skill on
the part of this person. In re Sovish, 769 F.2d 738, 743, 226 USPQ 771, 774 (Fed. Cir. 1985).
The difficulty that we have with the examiner’s position is that while one of ordinary skill in this
art would have reasonably inferred from the cited passage in Toyoda that scribe lines can be
formed only on the ABS side of the slider row, see generally, In re Lamberti, 545 F.2d 747, 750,
192 USPQ 278, 280 (CCPA 1976) (“The fact that neither of the references expressly discloses
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