Appeal No. 2003-1801
Application 09/559,347
the appellants, this is because no actual prior art product
possesses their claimed property of preventing lithium migration.
It is only a hypothetical product resulting from the examiner’s
proposed modification of Ross that would even arguably possess
this characteristic. The appellants urge that the examiner’s
proposed modification of Ross is based upon impermissible
hindsight knowledge of the subject specification teaching that
the here-claimed sealing layer of substantially amorphous NiNb
substantially prevents migration of lithium from the substrate to
the magnetic layer. In this latter regard, the appellants
emphasize that obviousness cannot be predicated on what is
unknown such as the migration prevention feature under
consideration which the examiner characterizes as “inherent.” In
re Rijckaert, 9 F.3d 1531, 1534, 28 USPQ2d 1955, 1957 (Fed. Cir.
1993). We share the appellants’ viewpoint on this matter.
The teachings of the applied prior art must be
selectively chosen and combined in numerous respects in order
to result in a magnetic recording medium which even arguably
possesses, under the principles of inherency, the feature of
substantially preventing migration of lithium from the substrate
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