Appeal 2006-2650
Application 10/011,886
Contrary to Appellants, we find the Examiner has provided the requisite
detailed analysis of the prior art and a reasoned basis for concluding that one
of ordinary skill in the art would have possessed the knowledge and
motivation to make the claimed invention. See Kahn, 441 F.3d at 988, 78
USPQ2d at 1336 (Fed. Cir. 2006). The Examiner notes that the references
teach the chemical similarity of compositions containing Ge and Te. The
Examiner points out that the references teach using a variety of wavelengths
with GeTe based recording layers. (Answer 5). Therefore, one of ordinary
skill in the art would have had a reasonable expectation that Tyan’s GeTe
recording layer would function with the short wavelength blue lasers (380-
420 nm) taught by Kasami. See In re Beattie, 974 F.2d 1309, 1312,
24 USPQ2d 1040, 1042 (Fed. Cir. 1992) ("As long as some motivation or
suggestion to combine the references is provided by the prior art taken as a
whole, the law does not require that the references be combined for the
reasons contemplated by the inventor."). Likewise one of ordinary skill in
the art would have had a reasonable expectation of gaining the advantages
taught by Zhou, Kojima or Kobayashi when adding oxygen or nitrogen to
the multilayer stack of Kasami as modified by Tyan and Uno. See In re
Fritch, 972 F.2d 1260, 1264-65, 23 USPQ2d 1780, 1782-83 (Fed. Cir. 1992)
(A reference stands for all of the specific teachings thereof as well as the
inferences one of ordinary skill in this art would have reasonably been
expected to draw therefrom.). As pointed out by the Examiner, the burden is
on Appellants to establish that the addition of nitrogen or oxygen in the
manner set forth in the claims exhibits unobvious effects when used with the
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