Appeal No. 2001-1698
Application 08/864,176
This issue has not been addressed by the examiner and responded to by appellants. See,
e.g., In re King, 801 F.2d 1324, 1326-28, 231 USPQ 136, 138-39 (Fed. Cir. 1986); In re Best,
562 F.2d 1252, 1254-56, 195 USPQ 430, 432-34 (CCPA 1977).
We further find that there is no indication in this record whether the multilayer adhesive
tape prepared by the process taught by Leonard, in which “[a]t least one of the backing and
adhesive layers is not mutually coextensive,” can be used as “a mounting tape for detachably-
mounting a flexible printing plate to a printing press plate holder,” which is required of the tape
prepared by the claimed method encompassed by appealed claim 1, or if one of ordinary skill in
this art would have modified the process of Leonard so as to produce such a tape. See, e.g.., In re
Stencel, 828 F.2d 751, 754-55, 4 USPQ2d 1071, 1073 (Fed. Cir. 1987).
Accordingly, in view of the these two outstanding issues, we find that on this record, the
examiner has not established that the claimed methods encompassed by appealed claim 1 and by
appealed claim 11, respectively, would have been prima facie obvious as a whole over the
combined teachings of Schwarz, Leonard and Cohrs, and of Mages, Sands, Schwarz, Leonard
and Cohrs.
The examiner’s decision is reversed.
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