Appeal 2007-3546
Application 10/418,180
On balance, we agree with the Examiner’s position that an ordinarily
skilled artisan would have the reasonable expectation that silver (Ag) would
have some anti-oxidative/anti-corrosion characteristics, properties that
would accrue to a RE-TM alloy upon addition of silver thereto.
More importantly, however, there is another rationale that would have
led one of ordinary skill in the art to add silver to the RE-TM material layer
of Ozaki. As explained by the Examiner, Sekiya “establishes that it is old in
the art to add Ag to a RE-TM alloy containing Tb and Co” (Answer 7).
Certainly, one of ordinary skill in the art would have been familiar with the
known additive elements in the list of additives taught by Sekiya, including
their known properties. Thus, an ordinarily skilled artisan would have been
led by the combined teachings of the applied references to add Ag to the Re-
TM material layer of Ozaki with the expectation that the addition of Ag
would contribute properties to the magnetic material layer in accordance
with the known characteristics of Ag. See KSR, 127 S. Ct. at 1739, 82
USPQ2d at 1395 (“The combination of familiar elements according to
known methods is likely to be obvious when it does no more than yield
predictable results.”).
Appellants argue that there would be no need for the additional anti-
corrosion properties arising from adding silver to the RE-TM layer of the
perpendicular magnetic recording medium of Ozaki because the magnetic
layer is protected by a carbon protective layer and a lubricant layer.
However, that contention is not persuasive because one of ordinary skill in
the art would have been led to add Ag to the RE-TM layer not withstanding
the presence of protective layers for the additive protective effects such Ag
7
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