Appeal No. 1998-0139
Application No. 08/503,320
considerably more narrow in scope than claimed subject matter is not sufficient to
rebut a prima facie case of obviousness. In re Dill, 604 F.2d 1356, 1361, 202 USPQ
805, 808 (CCPA 1979). Also see In re Boesch, 617 F.2d at 276, 205 USPQ at 219; In
re Lindner, id. and In re Susi, id. Here, the Appellants’ evidence of nonobviousness is
not limited to the scope of claim 1. All of the evidence relied upon contains the
element Gd, which is not a component contained in the alloys of claim 1. Therefore,
the evidence of superior results in not probative relative to the Examiner’s reference
evidence of obviousness.
Appellants assert claims 2 and 3 provide a preferred range and optimal range for
the value x (atomic percent). Appellants assert these claims are separately patentable
for these recitations. The arguments advanced by the Appellants as to why claims 2 and
3 are separately patentable do not meet the requirements of the rule. The recitation of
optimal or preferred ranges as set forth in these claims do not particularly point out why
the claims are patentable over Kato. Accordingly, claims 2 and 3 fall with independent
claim 1. Ex parte Schier, 21 USPQ2d 1016, 1019 (Bd. Pat. App. & Intf. 1991); Ex
parte Ohsumi, 21 USPQ2d 1020 (Bd. Pat. App. & Intf. 1991).
Claims 4, 5 and 6 differ from claim 1 in that they specify thickness of the
reproducing layer, recording layer and bilayer structure respectively. Kato discloses
and exemplifies the thickness of the magnetic layers. Embodiment 1 specifically
-8-
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