Appeal No. 2004-2148
Application No. 09/362,397
that can comprise a silicon nitride material. Challener discloses the
intermediate layer can have a thickness of 10 to 150nm. (Col. 4, ll. 67-68).
However, Challener does not describe the characteristics of the layer
specified by the claimed invention and the method of producing the
intermediate layer.
A person of ordinary skill in the art preforming the invention of
Challener, i.e., forming an information carrier comprising an intermediate
layer with a thickness in the disclosed range of 10-150nm would have been
practicing the claimed invention. Cf. Mehl/Biophile Int’l Corp. v. Milgraum,
192 F.3d 1362, 1366, 52 USPQ2d 1303, 1307 (Fed. Cir. 1999) (“Where, as here,
the result is a necessary consequence of what was deliberately intended, it
is of no import that the article’s authors did not appreciate the results.”); In
re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“It is
a general rule that merely discovering and claiming a new benefit of an
old process cannot render the process again patentable.”); accord In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Appellant
has not established that the intermediate layer of the information carrier of
Challener does not possess the characteristics described in the claims.
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