Appeal No. 95-0761
Application 08/050,511
does not disclose use of a release coating in his article, application of the adhesive to the
polymeric coating, or sufficient adhesion of the indicia to the polymeric coating that the polymeric
coating will fracture when the backing film is pulled away from a substrate to which the adhesive
is applied.
The examiner argues that Arnold, Hochner and Rosenfeld disclose appellant’s article
except for the pigmented adhesive and release layer (answer, pages 4-5). We are not persuaded
by this argument because we find the above-noted differences between the teachings of these
references and appellant’s claimed invention.
The examiner argues that the release layer is either inherent or an obvious modification of
the references, but provides no supporting evidence or reasoning.
When an examiner relies upon a theory of inherency, “the examiner must provide a basis in
fact and/or technical reasoning to reasonably support the determination that the allegedly inherent
characteristic necessarily flows from the teachings of the applied prior art.” Ex parte Levy, 17
USPQ2d 1461, 1464 (Bd. Pat. App. & Int. 1990). Inherency “may not be established by
probabilities or possibilities. The mere fact that a certain thing may result from a given set of
circumstances is not sufficient.” Ex parte Skinner, 2 USPQ2d 1788, 1789 (Bd. Pat. App. & Int.
1986).
In order for a prima facie case of obviousness to be established, the teachings from the
prior art itself must appear to have suggested the claimed subject matter to one of ordinary skill in
the art. See In re Rinehart, 531 F.2d 1048, 1051, 189 USPQ 143, 147 (CCPA 1976). The mere
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