Appeal No. 2002-0471
Application 09/277,862
asymmetrical dialkyl moieties is not controlling; the question under 35 USC 103 is not merely
what the references expressly teach, but what they would have suggested to one of ordinary skill
in the art at the time the claimed invention was made.”), the examiner has not set forth on this
record a scientific explanation of the result on the slider row and subsequently on each individual
slider diced therefrom, that one of ordinary skill in this art would have reasonably expected from
scribing only the ABS side of the slider row with respect to producing positive camber on the
ABS of a slider. Indeed, the bare allegation of similarity in processes and products does not
establish the steps that one of ordinary skill in the art would have performed on a slider row
scribed only on the ABS side following the teachings of Toyoda or how such steps according to
Toyoda would have suggested the modification of the steps of the method of Deshpande
necessary to incorporate the step of scribing of the ABS side of the slider row. As appellants
point out, Toyoda only discloses that scribing the back side of the slider row will result in
positive camber.
Accordingly, on this record, we agree with appellants that the result of combining the
teachings of Deshpande and Toyoda is a step of scribing the back side of a slider row, which, of
course, does not result in method that meets the limitations of appellants’ claims. See Uniroyal,
Inc. v. Rudkin-Wiley Corp., 837 F.2d 1044, 1050-54, 5 USPQ2d 1434, 1438-41 (Fed. Cir. 1988).
Thus, we reverse the grounds of rejection advanced on appeal, all of which are based on the
combined teachings of Deshpande and Toyoda.
The examiner’s decision is reversed.
Other Issues
We suggest that any further prosecution of the appealed claims before the examiner
further include consideration of the transitional term “comprising,” see generally, In re Baxter,
656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981) (“As long as one of the monomers
in the reaction is propylene, any other monomer may be present, because the term ‘comprises’
permits the inclusion of other steps, elements, or materials.”), with respect to whether the same
would open the appealed claims to encompass methods which include the additional step of
scribing the back side of the slider row and, if so, whether the combined the teachings of
Deshpande and Toyoda (col. 4, lines 20-42) apply to such claimed embodiments.
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