Appeal No. 2003-1801
Application 09/559,347
to the magnetic layer. Specifically, the substrate of Ross must
be replaced with a glass or glass-ceramic substrate comprising
lithium. Second, NiNb must be chosen from patentee’s many
embodiments as the layer to be deposited on this replacement
substrate. Third, the NiNb layer must be deposited directly onto
this substrate pursuant to yet another of the alternative
embodiments disclosed by Ross. Fourth, the layer must be
deposited to a thickness within the here-claimed range, the
obviousness of which is highly questionable at best.1 From our
perspective, this picking, choosing and combining of multiple
selected teachings in the applied prior art are the consequence
of impermissible hindsight rather than motivation, suggestion and
1 This is because the examiner’s obviousness conclusion
regarding thickness is based on the proposition that thickness is
a result effective variable and that it would have been obvious
to determine optimum values for such a variable, pursuant to In
re Woodruff, 919 F.2d 1575, 16 USPQ2d 1934 (Fed. Cir. 1990) and
In re Boesch, 617 F.2d 272, 205 USPQ 215 (CCPA 1980). However,
the thickness of Ross’ NiNb layer is result effective for a
purpose (i.e., laser texturizing) which is completely unrelated
to the appellants’ claimed purpose of preventing migration of
lithium from the substrate to the magnetic layer. Contrary to
the examiner’s inappropriate assumption, optimizing thickness
for the former purpose would not necessarily yield thicknesses
appropriate for the latter purpose, that is, thicknesses within
the here-claimed range.
6
Page: Previous 1 2 3 4 5 6 7 8 9 10 11 Next
Last modified: November 3, 2007