Appeal No. 2004-2148
Application No. 09/362,397
is of no import that the article’s authors did not appreciate the results.”); In
re Woodruff, 919 F.2d 1575, 1578, 16 USPQ2d 1934, 1936 (Fed. Cir. 1990) (“It is
a general rule that merely discovering and claiming a new benefit of an
old process cannot render the process again patentable.”); accord In re
Spada, 911 F.2d 705, 708, 15 USPQ2d 1655, 1657 (Fed. Cir. 1990). Appellant
has not established that the intermediate layer of the information carrier of
Challener does not possess the characteristics described in the claims.
The Examiner rejected the subject matter of claims 95 and 100 under
35 U.S.C. § 103(a) as unpatentable over the combined teachings of
Challener, Kim and Kluger. We affirm.
According to Appellant, Kugler teaches the DC with superimposed
AC powering of carrier and electrode. Kugler also teaches the
applicability of its teaching in general optical devices. (Brief, p. 33).
Appellant argues that in view of the unpredictability of the various
techniques to produce layers the person of ordinary skill in this art would
not find the subject matter of claim 95 obvious from the combination of
Challener, Kim and Kluger. (Brief, p. 33).
A person of ordinary skill in the art would have recognized the
suitable methods for forming layer in an information carrier. A person of
ordinary skill in the art would have reasonably expected that the process of
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