Appeal No. 1997-3243
Application 08/290,093
143, 147 (CCPA 1976). The mere 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
Fritch, 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. See Fritch, 972 F.2d at 1266, 23 USPQ2d
at 1783-84. The examiner has not provided such an
explanation. The examiner argues that adhesive tapes, wall
paper and label stock are commonly provided as an adhesive-
coated web in the form of a roll (answer, page 5), but does
not explain why an awareness of such products would have
fairly suggested, to one of ordinary skill in the art,
modifying Parrotta as proposed by the examiner.
For the above reasons, we find that the examiner has not
set forth a factual basis which is sufficient for supporting a
conclusion of prima facie obviousness of the invention recited
in any of appellant’s claims. Consequently, we reverse the 1
1 The examiner does not rely upon Sakai for any teaching
which would remedy the above-discussed deficiency in Parrotta.
6
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