Ex parte TYAN et al. - Page 5




          Appeal No. 1997-0495                                                        
          Application No. 08/399,787                                                  

          It follows that Chen’s reasons for providing an optical                     
          recording media with certain layers including dielectric and                
          reflecting layers and certain thicknesses have no apparent                  
          applicability to the optical recording medium taught by                     
          Kuroiwa.  Moreover, we perceive no other reason, and the                    
          examiner points to none specifically, for providing Kuroiwa’s               
          medium with layers including dielectric and reflecting layers               
          of the type taught by Chen.                                                 
               Similar rationale applies to the Yamada patent.  While                 
          Yamada’s recording medium includes dielectric and optional                  
          reflecting layers, the examiner refers to no specific teaching              
          in this reference which would have suggested providing the                  
          optical recording medium of Kuroiwa with such layers.                       
          Certainly, the problem/solution addressed by Yamada (equal                  
          temperature-rise profiles of the recording layer in the                     
          recorded and erased states; see lines 48-54 in column 3) has                
          no apparent applicability to Kuroiwa’s recording medium.                    
               Even if we were to assume that providing Kuroiwa’s medium              
          with a reflecting layer would be potentially beneficial for                 
          some unknown reason, the examiner’s obviousness conclusion                  
          still would be improper.  This is because the examiner has                  

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