Appeal No. 1997-3767 Page 5
Application No. 08/443,556
recording media are not subject to wear by a recording head (col. 1, lines 42-43). In contrast,
magnetic recording media, such as those described in the secondary references, are used in a CSS
(contact start stop) system in which a magnetic head contacts the magnetic recording media (Tsuno,
col. 1, lines 26-48; Futamoto, col. 1, lines 20-26; Hashimoto, col. 1, lines 53-54). In the secondary
references, lubricating organic films are added over protective films to prevent damage due to friction
and wear caused by magnetic head contact with the recording medium (Tsuno, col. 1, lines 48-56;
Hashimoto, col. 2, lines 36-50). Such friction and wear is not a concern in the headless magneto optic
environment in which the medium of Funkenbusch is to be used.
It is not clear from the Examiner’s remarks whether he is concluding that it is obvious to apply
the teachings of the secondary references to the magneto optic media of Funkenbusch or use the silicon
carbide protective layer of Funkenbusch in a magnetic recording layer which is used in a CSS system.
However, in either case, the media set forth by claim 11 is not suggested by the combination of prior art
in such a way as to render the claim prima facie obvious.
First, with regard to the formation of a magneto optic medium, the Examiner has pointed to no
convincing reason, suggestion, or motivation in the prior art for placing an organic lubricating film on the
recording medium of Funkenbusch. While the Examiner indicates that Tsuno describes a process in
which a lubricant is coated on a silicon oxide film and that “[t]he motivation for utilizing an oxide layer
beneath a lubricant is that such an oxide layer realizes a high coupling force with respect to the lubricant
and realizes lubricity and durability” (Answer, page 10), this in itself does not provide a reason,
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