Appeal No. 95-0761
Application 08/050,511
fact that the prior art could be modified as proposed by the examiner is not sufficient to establish a
prima facie case of obviousness. See In re Fritsch, 972 F.2d 1260, 1266, 23 USPQ2d 1780,
1783 (Fed. Cir. 1992). The examiner must explain why the prior art would have suggested to one
of ordinary skill in the art the desirability of the modification. Id. at 1266, 23 USPQ2d at 1783-
84.
Because the examiner has not provided the required evidence or reasoning to support his
argument that appellant’s release layer is inherent in or would have been obvious to one of
ordinary skill in the art in view of the applied references, the examiner’s argument is not sufficient
for establishing a prima facie case of inherency or obviousness as to the release layer.
The examiner argues that Arnold, Hochner and Rosenfeld disclose the intended mode of
operation in appellant’s “whereby” clause (answer, page 5). The examiner does not explain, and
we do not independently find, where any of these references disclose an adhesive applied in a
graphic pattern to a brittle polymeric coating such that the brittle polymeric coating will fracture
along the borders of the graphic pattern when the article is peeled away from a substrate to which
the adhesive is attached.
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