Appeal No. 1997-3767 Page 4
Application No. 08/443,556
subject matter pertains.’” In re Gartside, 203 F.3d 1305, 1319, 53 USPQ2d 1769, 1778 (Fed. Cir.
2000)(quoting 35 U.S.C. § 103(a) (1994)). The Examiner has the burden under 35 U.S.C. § 103 to
establish a prima facie case of obviousness. To establish a prima facie case of obviousness, “there
must be some teaching, suggestion or motivation in the prior art to make the specific combination that
was made by the applicant.” In re Dance, 160 F.3d 1339, 1343, 48 USPQ2d 1635, 1637 (Fed. Cir.
1998). We agree with the Appellants that the Examiner has failed to adequately show that one of
ordinary skill in the art, with no knowledge of the claimed invention, would have selected the elements
from the cited prior art references and combined them in the manner claimed. The reasoning presented
in the Answer fails to appreciate the differences between magneto optic and magnetic recording media
taught by the references and the difference in problems and solutions articulated for those different
media. Because of those differences, the references cannot be properly combined to obtain the subject
matter of the claims in the way the Examiner suggests.
Claim 11 requires sputtering a protective film of silicon carbide containing 5 to 25 atomic
percent silicon onto a magnetic thin film, oxidizing the silicon on the surface, and applying a lubricating
organic film so that it is bonded to the oxidized silicon. Funkenbusch, the sole primary reference used
to reject claim 11, describes a method of making a magneto optic recording medium (Title). In
contrast, the three secondary references used to reject claim 11 are all directed to magnetic recording
media (Titles). Magneto optic media use radiant energy through a source, such as a laser beam, to
record and interrogate information onto the medium (Funkenbusch, col. 1, lines 23-39). Magneto optic
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