Appeal No. 96-2404
Application No. 08/112,446
through 17 but not his rejection of claims 12 through 14 and
18 through 22.
Concerning the grouping of claims 1 through 6, 8 through
11 and 17, we agree with the examiner that it would have been
obvious for one with ordinary skill in the art to replace the
separation layer feature of the UK process with the non-
adhesive area feature disclosed by Shorin as an effective
mechanism by which to achieve removal of a laminate portion to
thereby obtain the cavity or recess desired by the UK
reference. According to the appellants, the examiner’s
conclusion of obviousness is inappropriate because the Shorin
reference is from a nonanalogous art. Additionally, the
appellants argue that Shorin prefers the separation layer
feature over the non-adhesive area feature and therefore
teaches away from the modification proposed by the examiner.
We disagree.
In the first place, we can not agree that the Shorin
reference is from a nonanalogous art. Although this reference
may not be within the field of the inventors’ endeavor, it is
unquestionably reasonably pertinent to the laminate-cutting
(i.e., the cavity-forming) problem with which the subject
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