Appeal No. 2003-1573
Application No. 08/854,407
coupling to the magnetic domains of layer 20.” Col. 1, l. 39; col.
1, ll. 58-60; col. 3, ll. 4-8; col. 3, ll. 42-47; and col. 4, ll.
19-24. This is the same function taught by Bonyhard for the spacer
layer 54 (col. 4, ll. 15-18). However, the examiner does not point
to any disclosure or suggestion in Jenson regarding the bias layer
of claims 1 or 9 on appeal.
Similarly, the examiner does not apply Koyama for any
teachings about the bias layer (see the Brief, page 7). The
examiner finds that Koyama discloses a graph of resistivity of
alpha-tantalum thin films at various nitrogen concentrations
(Answer, page 6). The examiner’s showing of “motivation” for
forming a tantalum nitride film does not refer to the spacer or
bias layer, but alleges that “it contributes to the nucleation of
further films deposited thereon.” Answer, page 7, citing col. 8,
ll. 48-51. We determine that this showing of motivation, whether
for the spacer or bias layer, is not sufficient since there is no
showing why one of ordinary skill in this art would have modified
Bonyhard with the tantalum nitride film of Koyama, i.e., why would
one of ordinary skill in this art want to contribute to the
nucleation of further films deposited thereon. See In re
Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed. Cir.
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