Ex parte ROGERS et al. - Page 7




             Appeal No. 96-2625                                                                                   
             Application 08/329,536                                                                               


             of a transparent layer which eventually abuts the substrate                                          
             protects the printing from damage, (col. 3, lines 28-29)”                                            
             (answer, page 4).                                                                                    
                    Appellants argue that one of ordinary skill in the art                                        
             would not print on Heatwole’s peelable layer because if the                                          
             printing were on that layer, the label could not be                                                  
             transferred to a second surface without the printing being                                           
             lost when the peelable layer is discarded during the transfer                                        
             process (reply brief, pages 4-5).  Thus, appellants argue, the                                       
             modification to Heatwole proposed by the examiner would                                              
             destroy Heatwole for its intended purpose (reply brief, page                                         
             5).                                                                                                  




                    The examiner responds that the printing on the inner                                          
             portion of Heatwole’s peelable layer would change the purpose                                        
             of that portion of the peelable layer (supplemental answer,                                          
             page 2).  Consequently, the examiner argues, one of ordinary                                         
             skill in the art would not transfer the label to a second                                            
             surface as taught by Heatwole but, rather, would leave the                                           
             label on the first surface (see id.).                                                                
                                                       -7-7                                                       





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