Ex parte MATSUDA et al.

Board of Patent Appeals and Interferences

Jul 30, 1997

07740708 (B.P.A.I. Jul. 30, 1997)

Application for patent filed August 6, 1991.1
We observe the following informality which is deserving of correction.2
On the last line of claim 27, “magnetic substrate” plainly should read --
nonmagnetic substrate--.
1
THIS OPINION WAS NOT WRITTEN FOR PUBLICATION
The opinion in support of the decision being entered today (1) was not written
for publication in a law journal and (2) is not binding precedent of the Board.
Paper No. 31
UNITED STATES PATENT AND TRADEMARK OFFICE
_____________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
_____________
Ex parte YOSHIBUMI MATSUDA, MASAAKI FUTAMOTO,
YOSHINORI MIYAMURA, TOKUHO TAKAGAKI,
HISASHI TAKANO, FUMIO KUGIYA, TAKESHI
NAKAO, KYO AKAGI, MIKIO SUZUKI,
HIROTSUGU FUKUOKA and TAKAYUKI MUNEMOTO
_____________
Appeal No. 94-3857
Application 07/740,7081
______________
HEARD: July 17, 1997
_______________
Before GARRIS, GRON and PAK, Administrative Patent Judges.
GARRIS, Administrative Patent Judge.
DECISION ON APPEAL
This is an decision on an appeal from the final rejection of
claims 1, 3 through 12, 21 and 27 through 29. The only other2
claims remaining in the application, which are claims 13 through
Appeal No. 94-3857
Application 07/740,708
2
20 and 22, stand withdrawn from further consideration by the
examiner as being directed to a nonelected invention.
The subject matter on appeal relates to a magnetic recording
medium which has at least two magnetic layers on a nonmagnetic
substrate characterized in that both saturation induction and
coercive force in the easy axes direction decrease from a surface
of the magnetic recording medium to the nonmagnetic substrate.
This appealed subject matter is adequately illustrated by
independent claim 1 which reads as follows:
1. A magnetic recording medium which has at least two
magnetic layers of thin film formed on a nonmagnetic substrate
directly or via an underlayer, characterized in that easy axes of
the at least two magnetic layers are oriented in the same
direction, and both saturation induction and coercive force in
the easy axis direction decrease from a surface of the magnetic
recording medium to the nonmagnetic substrate.
The following references are relied upon by the examiner as
evidence of obviousness:
Robinson 4,677,032 Jun. 30, 1987
Kawashima et al. 4,966,821 Oct. 30, 1990
(Kawashima)
Diepers et al. (Diepers) 38 05 787 A1 Sep. 7, 1989
(Translation copy attached)
All of the claims on appeal are rejected under 35 USC
§ 103 as being unpatentable over Robinson taken in view of
Appeal No. 94-3857
Application 07/740,708
3
Kawashima and Diepers.
We refer to the Brief and Reply Brief and to the Answer for
a complete exposition of the respective viewpoints expressed by
the appellants and the examiner concerning the above noted
rejection.
We cannot sustain this rejection. As properly argued by the
appellants in their Briefs, the applied prior art contains no
teaching or suggestion concerning the desirability of or a
methodology for decreasing both saturation induction and coercive
force in the easy axes direction from a surface of the magnetic
recording medium to the nonmagnetic substrate which is a
requirement of all the appealed claims. Further, none of the
applied references nor the nonapplied Sugita patent referred to
on page 6 of the Answer reasonably supports the examiner’s
inherency position. See Ex parte Skinner, 2 USPQ2d 1788, 1789
(Bd.Pat.App. & Int. (1986) (examiner must provide evidence or
scientific reasoning to establish the reasonableness of his
belief that functional limitation is inherent characteristic of
prior art). Further details regarding these deficiencies of the
examiner’s rejection may be found in the appellants’ Briefs of
record.
Appeal No. 94-3857
Application 07/740,708
4
The decision of the examiner is reversed.
REVERSED
)
BRADLEY R. GARRIS )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
TEDDY S. GRON )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
CHUNG K. PAK )
Administrative Patent Judge )
Appeal No. 94-3857
Application 07/740,708
5
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