Ex parte HORNAMAN et al. - Page 8




                 Appeal No. 1997-0230                                                                                                                   
                 Application No. 08/416,668                                                                                                             


                 invention defined by the claims.  Yount’s claims, however, are                                                                         
                 limited to applying PSA to paper stock.                                                                                                
                                                                                                                                                       
                          For the above reasons, we conclude that the examiner has                                                                      
                 not carried the burden of establishing a prima facie case of                                                                           
                 obviousness of the method recited in claim 1 or claims 2-7 which                                                                       
                 depend, directly or indirectly, therefrom.  Consequently, we                                                                           
                 reverse the rejection of these claims.                                                                                                 
                                                        Rejection of claims 8-13                                                                        
                          Bennett discloses applying a covering strip to a PSA layer                                                                    
                 which has been applied to a release layer (page 2, right col.,                                                                         
                 lines 8-10).   After the covering layer is removed, the PSA is1                                                                                                                
                 contacted with a second surface such as paper, cardboard, metal,                                                                       
                 glass or paint, and the release layer is removed so that the PSA                                                                       
                 can be stuck by pressure to a third surface while remaining                                                                            
                 adhered to the second surface (page 1, left col., line 55 -                                                                            
                 right col., line 20; page 2, left col., lines 38-45).                                                                                  
                          The deficiencies in Yount discussed above with respect to                                                                     


                          1The PSA applied to the release layer by Bennett is an                                                                        
                 ever-tacky gum rather than a polymer aqueous emulsion or a                                                                             
                 polymer organic solution as required by appellants’ claim 8.                                                                           
                                                                           8                                                                            





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