Appeal No. 1998-0542 Page 6
Application No. 08/479,843
We are cognizant that Kobayashi also discloses single
layer films may be formed of iron, an element soluble to iron,
and further elements and displays several examples thereof,
including magnetic and other properties, in Tables 1 and 2.
However, none of those examples represent a single layer film
made of the herein claimed composition and made so as to
possess a coercivity not exceeding 2.5 Oe. Indeed, as
developed in appellants’ brief (pages 7-13), Kobayashi would
have reasonably led one of ordinary skill in the art to employ
a multi-layer film when attempting to obtain a film with lower
coercivity rather than pursue such a property in a single
layer film. See Kobayashi at column 3, lines 8-21, column 9,
lines 22-32, and Tables 1-3.
Here, the examiner has not satisfactorily explained why
one of ordinary skill in the art would have been led to select
a composition corresponding to the claimed composition from
the plethora of compositions that Kobayashi generically
suggests for a single layer film and form that film in such a
way as to necessarily have the herein claimed properties. Nor
has the examiner adequately explained how Otomo together with
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