Ex Parte TOLMAN - Page 6




          Appeal No. 2003-1573                                                        
          Application No. 08/854,407                                                  


          “that it controls the anisotropy of the film” (Answer, page 9,              
          citing col. 4, ll. 28-33).  Again we determine that this                    
          “motivation” is not sufficient since the examiner has not presented         
          any convincing reasons for the combination of Cuomo with Bonyhard,          
          i.e., why would Bonyhard desire to control the anisotropy,                  
          specifically to affect the perpendicular anisotropy of the film.            
          See In re Dembiczak, supra.                                                 
               The examiner finds that Matsushita teaches a Fe-Al-Si-N film           
          sputtered from a FeAlSi alloy in a nitrogen-argon sputtering gas            
          (Answer, page 8).  The examiner’s “motivation” for sputtering a             
          Sendust film including nitrogen is that it “provides good wear              
          resistance and high frequency soft range magnetism in VTR head              
          materials.”  Answer, page 9.  We determine that this “motivation”           
          is also insufficient since the examiner has not shown why one of            
          ordinary skill in this art would have modified the bias layer of            
          Bonyhard by use of a Sendust film including nitrogen as disclosed           
          by Matsushita.  The examiner found that Bonyhard disclosed certain          
          alloys as the bias (or SAL) layer but failed to present any                 
          findings that a Sendust alloy was disclosed/suggested (Answer, page         
          5, second full paragraph; see Bonyhard, col. 4, ll. 25-31).  The            
          examiner found that Matsushita disclosed incorporating nitrogen             
          into a metal alloy used in general in “VTR head materials” (Answer,         

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