Appeal No. 2004-2148
Application No. 09/362,397
Appellant’s argument is not persuasive. Appellants have not
addressed the motivation presented by the Examiner. A person of ordinary
skill in the art would have reasonably expected that the optical cement
spacer layers disclosed in the information carrier of Imaino could also have
been used in the information carrier of Challener. “For obviousness under §
103, all that is required is a reasonable expectation of success.” In re
O’Farrell, 853 F.2d 894, 904, 7 USPQ2d 1673, 1681 (Fed. Cir. 1988).
Claims 123-127 are therefore also believed to be unobvious from the cited
reference or reference combination.
The Examiner rejected claims 121 and 122 under 35 U.S.C. § 103(a) as
unpatentable over combination of Challener and Sproul. We reverse.
Claims 121 and 122 further define the subject matter of claim 107 by
specifying that the intermediate layer comprises ZrN, HfN or TiN (claim 121)
or ZrN (claim 122). The Examiner relies on the Sproul reference for
describing a layer comprises ZrN. According to the Examiner, Sproul
discloses depositing ZrN in an nitrogen atmosphere to provide a protective
hardness layer. (Answer, p. 16). We agree with Appellant that Sproul
teaches ZrN, HfN or TiN, column 8, as suitable for hard layers of metal
cutting tools and that no optical properties are discussed or contemplated
by Sproul. (Brief, p. 23). Moreover, the Examiner has not explained why
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