Appeal No. 1997-3334
Application No. 08/456,588
photosensitive article or the high peel strength adhesive
layer “is a mere matter of design choice” (Answer, paragraph
bridging pages 4-5). The examiner further concludes that,
based on the teachings of Platzer ‘120 and “the ability of the
skilled artisan to modify well known process manipulation
steps,” it would have been prima facie obvious to obtain the
claimed process “with a reasonable expectation of achieving
the same or similar results” as Platzer ‘120 (Answer, page 5).
Appellant argues that there is no suggestion in Platzer
‘120 of laminating the adhesive layer to the high peel
strength adhesive containing receiver sheet rather than to the
photosensitive layer (Brief, page 12). Appellant submits that
the mere fact that a reference can be modified does not render
an invention obvious if the prior art does not also suggest
the desirability of such a modification (Reply Brief, page 2).
We agree.
The initial burden of establishing a prima facie case of
obviousness rests with the examiner. In re Oetiker, 977 F.2d
1443, 1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992). In the
appropriate circumstances, a single prior art reference can
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