Appeal No. 1998-0139
Application No. 08/503,320
the elements in the alloy. The claims provide adequate notification of the metes and
bounds of the claimed subject matter.
For the foregoing reasons and those set forth in the Brief, the rejection of
claims 1 to 20 under 35 U.S.C. § 112, second paragraph, is reversed.
B. The Rejection under Section 103
It is well established that the examiner has the initial burden under § 103 to
establish a prima facie case of obviousness. In re Oetiker, 977 F.2d 1443, 1445, 24
USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745 F.2d 1468, 1471-72, 223
USPQ 785, 787-88 (Fed. Cir. 1984). To that end, the examiner must show that some
objective teaching or suggestion in the applied prior art, or knowledge generally
available in the art would have led one of ordinary skill in the art to arrive at the claimed
invention. Pro-Mold & Tool Co. v. Great Lakes Plastics, Inc., 75 F.3d 1568, 1573, 37
USPQ2d 1626, 1630 (Fed. Cir. 1996).
According to the Examiner, Kato teaches magneto-optical recording medium
having a reproducing layer and a recording layer that have alloys containing the claimed
elemental composition. The Examiner asserts, Kato’s magneto-optical recording
medium differs from the claims because of the specific atomic ratio of the alloys. The
Examiner concludes it would have been obvious to vary the atomic ratio composition of
the alloys to arrive at the claimed subject matter. (Answer, p. 3).
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