Appeal No. 2002-1810 Page 6
Application No. 09/336,503
51, which is in the first (slider) side of the load beam, while claim 10 requires that it be
mounted from the second (opposite) side of the load beam.
We therefore conclude that Goss fails to anticipate the subject matter recited in
independent claim 10, and we will not sustain the rejection of claim 10 or, it follows, of
claims 11-21, which depend from claim 10.
Independent claim 22 requires that the load beam have first and second sides,
that there be an opening in the rigid portion of the load beam for receiving the
microchip, and that the microchip “extend[ing] from said rigid portion second side
through to said rigid portion first side.” As we explained above, Goss mounts the
microchip in the cavity between the two portions of the load beam. Although it appears
in Figure 5 to extend through the opening in the base portion, the microchip cannot
extend through the opening in the shell portion, and therefore it does not extend
“through” the load beam from the first side to the second side. On this basis, Goss fails
to anticipate the subject matter of claim 22. Moreover, as was the case in claim 5,
claim 22 requires that the conductor be fixed to the first (slider) side of the load beam,
which is not the case in Goss. The rejection of claim 22 therefore cannot be sustained.
The Rejection Under Section 103
Claim 2, which depends from claim 1, stands rejected as being unpatentable
over Goss. The test for obviousness is what the combined teachings of the prior art
would have suggested to one of ordinary skill in the art. See, for example, In re Keller,
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