Ex Parte Watase et al - Page 4

              Appeal No.  2006-1869                                                                 
              Application No.  10/396,814                                                           

              finding is not disputed by the appellants.                                            
                    The appellants’ basic position is to the effect that                            
              Matsumura is silent with regard to surface roughness (SRa,                            
              SRz) values of the backcoat layer.                                                    
                    The examiner’s position on this issue is that                                   
              Matsumura teaches that the surface roughness                                          
              characteristics SRa and SRz of the back surface of an MRM                             
              are result-effective variables which affect sliding                                   
              smoothness. Matsumura does disclose SRa and SRz values                                
              within the ranges recited in the instant claims (Matsumura:                           
              Abstract; Table 1-example 1), but only with respect to the                            
              exposed back surface of layer 1b of non-magnetic support 1.                           
                    Apparently, it is the examiner’s position that it                               
              would have been obvious, within the context of 35 U.S.C.                              
              § 103, to follow the guidance provided by Matsumura with                              
              regard to surface roughness when a backcoat layer (rather                             
              than the second layer of the non-magnetic support) is used                            
              as the outermost layer on the back surface of a MRM in                                
              order to maximize sliding smoothness.  We agree.                                      
                    In other words, when a backcoat layer is the outermost                          
              exposed layer, it logically follows that one of ordinary                              
              skill in the art would want it to have the same roughness                             
              characteristics as taught by Matsumura for exposed layer 1b                           

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