Appeal 2006-2650
Application 10/011,886
recited GeTe compositions, as opposed to other, similar recording layers.
(Answer 8-9).
A prima facie case of obviousness may be rebutted by evidence of
unexpected results or a showing that the prior art teaches away from the
claimed invention in any material respect. In re Geisler, 116 F.3d 1465,
1469-70, 43 USPQ2d 1362, 1365 (Fed. Cir. 1997). See In re Soni, 54 F.3d
746, 749, 34 USPQ2d 1684, 1686 (Fed. Cir. 1995). Appellants argue that
the applied prior art teaches away from the invention as claimed because:
(1) the use of GeTeSb in Kasami’s examples directs one of ordinary skill in
the art away from the GeTe compositions of Tyan and (2) the use of SiC-O-
H crystallization promotion layers in Kasami teaches away from oxides of
Ta and Si, nitrides of Si and Al and carbides of Se, having a thickness of 15
nm or less present in contact with the recording layer. (Br. 6).
In our view, Appellants have failed to establish that one of ordinary skill
in the art, upon reading the applied prior art, would have been discouraged
from making the Examiner’s proposed modifications/combinations to
achieve the claimed invention. See In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed. Cir. 1994). See also, In re Bozek, 416 F.2d 1385,
1390, 163 USPQ 545, 549 (CCPA 1969) (“[A] reference disclosure must be
evaluated for all that it fairly teaches and not only for what is indicated as
preferred.”). As pointed out by the Examiner, although Kasami may
indicate a preference for a GeTeSb recording layer, Kasami specifically
discloses the use of GeTe recording media and Tyan identifies the benefits
of using GeTe recording layers. (Answer 5). See In re Thrift, 298 F.3d
1357, 1365, 63 USPQ2d 2002, 2007 (Fed. Cir. 2002) (When a secondary
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