Appeal No. 2002-1701 Page 5
Application No. 09/076,111
discouraged from following the path set out in the reference, or would be led in a
direction divergent from the path that was taken by the applicant." In re Gurley, 27 F.3d
551, 553, 31 USPQ2d 1130, 1131 (Fed. Cir. 1994)
Here, Saito discloses "[a] multilayer film consisting of a nonmagnetic
undercoating film and a magnetic undercoating film. . . ." Col. 9, l. 67 - col. 10, l. 2. For
its part, the nonmagnetic undercoating film can be formed from Ta, col. 10, ll. 7-8,
which "has a thickness in the range of 1 nm to 10 nm." Id. at ll. 27-28. Regarding the
lower thickness, the reference warns, "[i]f the thickness is less than 1 nm, the film will
not be easily formed as a single-layer film." Id. at ll. 28-30. Because Saito discourages
a thickness less than 1 nm, the reference teaches away from reducing the thickness
below 1.0 nm.
Of course, "[w]hen prior art contains apparently conflicting references, the Board
must weigh each reference for its power to suggest solutions to an artisan of ordinary
skill. The Board must consider all disclosures of the prior art. . . ." In re Young, 927
F.2d 588, 591, 18 USPQ2d 1089, 1091 (Fed. Cir. 1991) (citing In re Lamberti, 545 F.2d
747, 750, 192 USPQ 278, 280 (CCPA 1976)). See, e.g., In re Merck, 800 F.2d 1091,
1097, 231 USPQ 375, 380 (Fed. Cir. 1986) ("Petersen must be read, not in isolation,
but for what it fairly teaches in combination with the prior art as a whole."). In weighing
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