Ex Parte Nallan et al - Page 8

                Appeal 2007-3546                                                                              
                Application 10/418,180                                                                        

                addition would provide as well as for the other known properties that Ag                      
                would had been expected to possess and furnish upon addition to the RE-TM                     
                layer.                                                                                        
                      As for Appellants’ contentions with regard to a lack of a disclosure in                 
                the applied references that Ag addition to the magnetic recording layer                       
                would facilitate domain wall fixing, we note that the Examiner’s basis for                    
                the combination need not be for the same reasons as Appellants disclose.                      
                See In re Kemps, 97 F.3d 1427, 1430, 40 USPQ2d 1309, 1311 (Fed. Cir.                          
                1996) (the motivation to combine features need not be identical to that of                    
                appellant to establish a prima facie case of obviousness).                                    
                      On this regard, we affirm the Examiner’s first stated obviousness                       
                rejection.                                                                                    
                      In rejecting claims 5, 6, 12, and 13 as obvious to one of ordinary skill                
                in the art at the time of the invention, the Examiner additionally relies on                  
                Tanahashi.  Appellants argue these rejected claims as a group.  Thus, we                      
                select claim 5 as the representative claim.                                                   
                      Dependent claim 5, requires that the perpendicular magnetic recording                   
                medium of claim 1 further includes a soft magnetic under layer between the                    
                substrate and the intermediate layer, one or more undercoating layers                         
                between the substrate and the soft magnetic under layer, and a domain                         
                controlling layer located between the under layer(s) and the soft magnetic                    
                layer.                                                                                        
                      The Examiner relies on Tanahashi for disclosing a domain controlling                    
                layer (anti-ferromagnetic layer) between a soft magnetic layer and an under                   
                layer (one of the three domain control layers) in a perpendicular magnetic                    


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