Appeal 2006-3069
Application 10/661,273
3. Whether the cited Onda reference meets all the structural
limitations of the representative claim.
ANALYSIS
Issue 1
We consider first the Examiner’s rejection of claims 1, 3-7, and 17-22
as being indefinite under 35 U.S.C. § 112, second paragraph, for failing to
particularly point out and distinctly claim the subject matter which
Appellants regard as their invention. Specifically, the Examiner concludes
that independent claims 1 and 17 are indefinite because they are allegedly
misdescriptive of the disclosure (Answer 4; see also note 1 supra).
In particular, the Examiner points to the portion of claim 1 that recites
“an air bearing between the slider and disk is not disrupted [emphasis
added]” (claim 1, last line).2 The Examiner then points to a portion of the
Specification where an air bearing between the slider and the disk is
described as not substantially disrupted (Answer 4, emphasis added; see also
Specification, Abstract, ll. 3-4 and p. 3, ll. 6, 7, and 18). Thus, the Examiner
finds the language of claim 1 misdescriptive of the disclosure (Answer 4).
The Examiner makes the same finding with respect to similar language
recited in the last line of independent claim 17: i.e., “an air bearing surface is
not disrupted by the movement of the data transfer element” (Answer 4,
emphasis added).
2 As explained at page 3 of the Answer, the copy of claim 1 in the Claims
Appendix is incorrect.
4
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