Appeal No. 1998-0139
Application No. 08/503,320
Tb, Fe, Co and Cr would have been obvious to one of ordinary skill in the art because to
arrive at the claimed invention one of ordinary skill in the art would modify the alloys
of embodiment 3 by adding Tb to the alloy of the first layers and replacing the alloy of
the second layer with the alloy of embodiment 4 (or to put it another way, replace Pt
with Cr in the alloy of the second layer of embodiment 3). These modifications flow
logically from the use of the specific elements having been individually taught by Kato,
thus establishing a prima facie case of obviousness. In re Kerkhoven, 626 F.2d 846,
850, 205 USPQ 1069, 1072 (CCPA 1980). One of ordinary skill in the art would
reasonably expect that the use of Tb in the first alloy and the substitution of Cr for Pt in
the second alloy, would each produce the same effect as when used individually. “For
obviousness under § 103, all that is required is a reasonable expectation of success.”
In re O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988). In light
of the foregoing and for the reasons expressed in the answer, it is our determination that
the Examiner has established a prima facie case of obviousness with respect to the
subject matter of claim 1.
Appellants direct our attention to page 17 of the specification to exhibit critical
factors associated with the claimed invention. (Brief, p. 8). It is well settled that
evidence presented to rebut a prima facie case of obviousness must be commensurate
in scope with the claims to which it pertains and that such evidence which is
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