Appeal No. 2003-1173
Application No. 09/991,855
Section 102 rejection of claims 5, 6, 9-11, 15, 16, 20, 21, 30-33, and 35-38 over
Watanabe
Claims 5 and 10 in view of Watanabe
“Anticipation is established only when a single prior art reference discloses,
expressly or under principles of inherency, each and every element of a claimed
invention.” RCA Corp. v. Applied Digital Data Sys., Inc., 730 F.2d 1440, 1444, 221
USPQ 385, 388 (Fed. Cir. 1984).
In appellants’ view, Watanabe Figure 3 shows a slider having two rails, with the
leading edge of the respective rail being a pointed tip that is spaced from the body.
Appellants contend that claim 5 distinguishes over the depicted structure in its
requirement that the leading edge extends to the body. (Brief at 7.)
Instant claim 5 recites that each rail member has a leading edge “facing in the
general direction of relative motion” between the transducer and the medium. The
claim also requires, at least implicitly, that the leading edge have some measurable,
nonzero width, because the “edge” has “a narrower width” as compared to the trailing
edge of the rail.3 The claim is not specific, however, with respect to what portion of the
leading edge having this “narrower width” is to be compared to the trailing edge width.
Nor is the claim specific with respect to what portion of the leading edge may be
“spaced from outer side surfaces” of the body.
3 The word “edge” may denote the line where an object or area begins or ends (i.e., a border), but
also may denote a portion adjacent to a border (e.g., “walk on the edge of the deck”). See Webster’s
Ninth New Collegiate Dictionary at 396 (1990).
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