Appeal 2007-2256
Application 10/903,064
not be present to render such substitution obvious. See In re Fout, 675 F.2d
297, 301, 213 USPQ 532, 536 (CCPA 1982). Under 35 U.S.C. § 103, the
factual inquiry into obviousness requires a determination of: (1) the scope
and content of the prior art; (2) the differences between the claimed subject
matter and the prior art; (3) the level of ordinary skill in the art; and (4)
secondary considerations. See Graham v. John Deere of Kansas City,
383 U.S. 1, 17-18, 148 USPQ 459, 467 (1966). The analysis supporting
obviousness should be made explicit and should “identify a reason that
would have prompted a person of ordinary skill in the art to combine the
elements” in the manner claimed. KSR Int’l Co. v. Teleflex, Inc., 127 S.Ct.
1727, 1731, 82 USPQ2d 1385, 1389 (2007).
Applying the preceding legal principles to the factual findings in the
record of this appeal, we determine that the Examiner has established a
prima facie case of obviousness, which prima facie case has not been
adequately rebutted by Appellants’ arguments. As shown by Appellants’
Specification, their field of endeavor is magnetic thin film media
(Specification 1:12). We determine that Shimizu is from the same field of
endeavor, namely it is directed to a magnetic recording medium (¶ [0002]).1
Appellants’ argument that perpendicular and longitudinal recording media
are non-analogous is not persuasive. Perpendicular and longitudinal
magnetic recording media may only differ by a minute amount of oriented
axes (Shimizu, ¶¶ [0003] and [0005]), and Shimizu teaches the use of both
perpendicular and longitudinal films in one embodiment (see factual finding
(6) listed above). Therefore, we determine that perpendicular and
1 Appellants admit that Lee is analogous art (Br. 8).1
6
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