Ex Parte Laconto et al - Page 4

               Appeal 2007-1372                                                                             
               Application 10/423,283                                                                       

               statement that the finish-grinding composition of Orii, which is abrasive-                   
               free, has no bearing on the instant rejection is clearly erroneous.  While the               
               Examiner points to paragraphs 8 and 9 of Orii for teaching that "abrasive                    
               slurries are conventional for magnetic head polishing" (Answer 6,                            
               penultimate para.), the cited background section of Orii refers to selective                 
               grinding of metallic film such as permalloy and Sendust, which do not                        
               appear to comprise aluminum oxide (see previous para. 0007).  Also, the                      
               Background section of Orii does not establish that a "conventional free                      
               abrasive slurry" comprises the presently claimed abrasive and phosphorus                     
               compound for machining a substrate for comprising aluminum oxide.                            
                      The Examiner also sets for that "Sun teaches that the substrate can be                
               any suitable substrate such as a semiconductor substrate, a MEMS substrate,                  
               a substrate that retains information in the electromagnetic form, a nickel                   
               containing substrate, and a nickel phosphorus (NiP) substrate. (Col. 3, Lines                
               56-67)" (Answer 3, second para.).  However, Appellants make the                              
               compelling argument that "[a] substrate consisting essentially of aluminum                   
               oxide is not a 'suitable substrate' when properly construed with respect to                  
               Sun" (Reply Br. 3, last para.).  Appellants further submit that "[a]luminum                  
               oxide is an insulator and is not a semiconductor, nor is it capable of storing               
               data" (sentence bridging pages 3-4 of Reply Br.).  Accordingly, in the face                  
               of Appellants' argument, the Examiner has not established that one of                        
               ordinary skill in the art would have understood that a suitable substrate for                
               the machining process of Sun would include Appellants' aluminum oxide.                       




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