Ex Parte Bian et al - Page 5

                Appeal 2007-2256                                                                                 
                Application 10/903,064                                                                           

                           are mostly oriented vertically, and a protective film (Abstract; Fig.                 
                           5; ¶¶ [0007], [0016], [0027], [0028], [0036], and [0112]);                            
                       (4) Shimizu teaches that the soft magnetic undercoat film is provided                     
                           for causing the perpendicular magnetic film to be magnetized in a                     
                           direction perpendicular to the substrate (¶ [0055]), that the                         
                           orientation-regulating film is provided for regulating the crystal                    
                           orientation and crystal grain size of the perpendicular magnetic                      
                           film (¶¶ [0098] and [0099]), and, in one embodiment, an                               
                           orientation-regulating undercoat film is provided between the soft                    
                           magnetic undercoat film and the orientation-regulating film (¶                        
                           [0177]);                                                                              
                       (5) Shimizu teaches that the material for the orientation-regulating                      
                           undercoat film may be a material having a B2 structure, with                          
                           examples including AlRu and CoTi (¶¶ [0178], [0179], and                              
                           [0180]); and                                                                          
                       (6) Shimizu teaches another embodiment where a longitudinal                               
                           undercoat film, with easy-magnetization axes oriented in a                            
                           longitudinal direction, is added between the substrate and the soft                   
                           magnetic undercoat film (¶ [0188]; Fig. 7).                                           
                       Determination that a reference is from non-analogous art is two-fold;                     
                first, we decide if the reference is within the field of Appellants’ endeavor; if                
                it is not, we proceed to determine whether the reference is reasonably                           
                pertinent to the particular problem with which Appellants were involved.                         
                See In re GPAC, 57 F.3d 1573, 1577, 35 USPQ2d 1116, 1120 (Fed. Cir.                              
                1995).  An express suggestion to substitute one equivalent for another need                      


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