Appeal No. 95-4066
Application 07/963,189
copper make useful metal reflector layers, no alloy within the
range claimed by appellants is described or suggested.
Moreover, Shindo always requires an intermediate layer of an
organic heterocyclic compound between the metal layer and the
recording layer. Claim 1 requires that the recording layer is
coupled to the reflecting layer.
Thus, in his first stated rejection, as it applies to all
claims except claim 7, the examiner has failed to discharge
his burden of persuasion by failing to provide both a factual
basis which supports a legal conclusion of obviousness and by
failing to provide evidence which would establish the
requisite motivation for making the proposed substitution and,
assuming motivation existed, that an ordinarily skilled
routineer would have had a reasonable expectation of success
by making the various selections and substitutions suggested
by the prior art on which the examiner relies.
While there is a modicum of logic to the examiner's
stated position, we find it is flawed for at least two
reasons. First, making the proposed selections and
substitutions does not yield a silver-palladium alloy as
claimed in claims 1, 4, 6, 10, 12, 13, 15, 17 and 20. Second,
9
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 14 15 Next
Last modified: November 3, 2007