Appeal No. 2006-0585
Application No. 09/917,751
The references set forth below are relied upon by the examiner as evidence of
obviousness:
Sato et al. (Sato) 4,735,839 Apr. 5, 1988
Cho et al. (Cho) 5,579,150 Nov. 26, 1996
Liao et al. (Liao) 5,958,087 Sep. 28, 1999
Ishida et al. (Ishida) 5,998,094 Dec. 7, 1999
Claims 30-49 are rejected under 35 U.S.C. § 103(a) as being unpatentable over Liao
taken with Cho in view of Sato alone or further in view of Ishida.1
Rather than reiterate the respective positions advocated by the appellants and by the
examiner, we refer to the brief and to the answer for a complete exposition thereof.
OPINION
We will sustain these rejections for the reasons well stated in the answer. We
add the following comments for emphasis.
With respect to the examiner’s proposed combination of Liao and Cho, the
appellants advance the following argument on page 6 of their brief:
In the formula (I) of Cho et al., R represents a heteroaromatic
residue and R' represents alkyl; η represents a positive integer not
less than 2. Clearly, one of ordinary skill in the art would
appreciate the unequivocal teaching in Cho et al that η must be at
least 2 and R' alkyl. Therefore, one of ordinary skill in the art
would not combine the teachings of Liao et al and Cho et al to
arrive at the presently claimed data storage media as the necessary
motivation to make the modifications to the structural formula is
not present, other than in appellants’ specification which may not
be used as a teaching reference. Clearly, Liao et al. states that the
1 The claims on appeal have not been separately argued in the manner required by 37 CFR § 41.37(c)(1)(vii)(Sept.
13, 2004). Therefore, in our disposition of this appeal, we have focused on independent claim 40 (since this is the
broadest claim before us) with which all other claims will stand or fall.
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