Appeal No. 95-4189
Application 07/334,872
We find that the appellants’ specification would have
conveyed sufficient knowledge to one skilled in the art of the subject
matter set forth in the appealed cliams. The examiner has not met the burden of establishing why one
of ordinary skill in the art would not have recognized in the specification a description of the
invention as later claimed. The examiner acknowledges that Fig. 2 does show ferromagnetic grains
mixed with boride/carbide materials. While appellants do refer to a “laminated structure,” one skilled
in the art would have understood from appellants’ disclosure that the laminated structure can be a
single layer comprising a plurality of grains surrounded by a boride or carbide material. The
Examiner’s comments regarding Example 3 as supporting a laminated structure are noted. However,
appellants state that an EPMA analysis of the product formed in accordance with Example 3 showed
that the “carbide or boride was present in such a manner that they surrounded the crystal grains
forming the ferromagnetic film similarly to Example 2” (specification, p. 22, lines 1-10).
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