Appeal No. 2003-1892
Application No. 09/681,288
permeable. Hence, the Examiner has not established the requisite motivation for
one of ordinary skill in the art to use the a reactive layer disposed between an
oxygen permeable UV coating and the substrate layer of an optical recording media
described by Nishida, Shinkai or Takagishi. In addition, the Examiner has not
established that the protective layers comprising UV curable resins described by
Nishida, Shinkai and Takagishi would necessarily, or inherently have oxygen
permeability. We find that the Examiner has not adequately refuted Appellants’
argument that the teachings of Rollhaus are mutually exclusive from Nishida,
Shinkai and Takagishi. (Brief, p. 12).
We agree with the Appellants that Nishida, Shinkai and Takagishi do not
desired limited reflectivity as disclosed by Rollhaus and the Examiner’s rejection is
premised on hindsight. (Brief, p. 12). The record indicates that the motivation
relied upon by the Examiner for selection of an oxygen permeable protective layer
comprising UV curable resins comes from the Appellants’ description of their
invention in the specification rather than coming from the applied prior art and that,
therefore, the Examiner used impermissible hindsight in rejecting the claims. See
W.L. Gore & Associates v. Garlock, Inc., 721 F.2d 1540, 1553, 220 USPQ 303,
312-13 (Fed. Cir. 1983); In re Rothermel, 276 F.2d 393, 396, 125 USPQ 328, 331
(CCPA 1960). Accordingly, we reverse the Examiner’s rejection under 35 U.S.C.
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