Appeal No. 2004-2148
Application No. 09/362,397
In rejecting the subject matter of claim 92, the Examiner relies on the
teachings of Challener and Tawara. Challener discloses an information
carrier comprising at least two solid material interfaces. Challener does not
disclose that silicon nitride hydrogen (SiNH) is a suitable material for the
intermediate layer. Challener also does not disclose the method of
applying the intermediate layer. The Examiner relies on Tawara for
teaching the application method of a SiNH material. (Answer, pp. 8-11).
The Appellant argues, and we agree, that Tawara does not describe the
process of the claimed invention. Tawara does not disclose the depositing
of the SiNH material by means of a reactive vacuum coating process in a
process atmosphere that comprises adjusting the concentration of a
reactive gas that comprises N and H. (Brief, pp. 31-32). The Examiner has
not cited support for assertion that the reactive gas of Tawara comprises N
and H. The Examiner states, Answer pages 19 and 20, that “Appellant
admits that there is an implication from Tawara to utilize reactive gases to
achieve such compositions.” Thus, it appears that the Examiner is asserting
that the use of reactive gases comprising N and H is inherent in the
teachings of Tawara. However, inherency cannot be established by
implications, probabilities or possibilities. See In re Oelrich, 666 F.2d 578,
581, 212 USPQ 323, 326 (CCPA 1981). As stated in In re Rijckaert, 9 F.3d
-9-
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