Appeal No. 2003-1801
Application 09/559,347
opposing viewpoints expressed by the appellants and by the
examiner concerning the above-noted rejections.
OPINION
None of these rejections can be sustained.
Regarding the § 103 rejection, it is the examiner’s
basic position that it would have been obvious to modify the
magnetic recording medium (and the corresponding method of
manufacturing such a magnetic recording medium) of Ross in such a
manner as to yield a magnetic recording medium (and corresponding
method) of the type here claimed and that the medium (and method)
resulting from this modification would inherently possess the
here-claimed property of substantially preventing migration of
lithium from the substrate to the magnetic layer of the magnetic
recording medium. According to the appellants, the examiner’s
obviousness conclusion is the result of improperly substituting a
retrospective view of inherency for some teaching or suggestion
which supports the selection and use of the various elements in
the particularly claimed combination. In re Newell, 891 F.2d
899, 901, 13 USPQ2d 1248, 1250 (Fed. Cir. 1989). As argued by
4
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007