Appeal No. 1997-3544
Application No. 08/404,234
teaches many binders for the magnetic layer (column 4, l. 17
et seq.). After this disclosure of possible binders,
Shimozawa discloses that “[t]he magnetic layer may further
contain a lubricant.” (Col. 13, l. 51). Among many other
lubricants, this reference teaches that “radiation-curable
lubricants may conveniently be used.” (Col. 14, ll. 11-12).
From the classes of radiation-curable lubricants, Shimozawa
teaches some “fluoride substituted lubricants” (col. 14, ll.
42-58) but does not include any fluoride substituted
lubricants among the preferred examples or in any of the
examples (see col. 14, ll. 59-63 and the Examples on cols. 16-
24). The examiner has not presented any convincing evidence
or reasoning, nor pointed to any evidence in Shimozawa, that
even if one of ordinary skill in the art selected the fluoride
substituted lubricants of Shimozawa, the fluorine group would
graft onto the main polymer chain in the polymeric binder of
Chernega or Nakamura. On this record, there is no evidence
that adding the fluoride substituted lubricant of Shimozawa to
the binder of Chernega or Nakamura would have resulted in a
pendant fluorine-containing group in the final binder. See
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