Appeal No. 1998-1804
Application 08/668,291
applied to the backing, the adhesive and foil transfer to the
toner (col. 4, lines 23-30).
The examiner argues that “[i]t would have been obvious to
one of ordinary skill in the art to have employed a silicone
coating on the membrane, as is conventional in the art and
shown by Johnstone, in the method and apparatus of Natarajan
in order to prevent undesired adhesion” (answer, fourth page).
In the examiner’s view, the “suggestion or motivation to
combine [Natarajan and Johnstone] is provided by the
desirability of improving the non-stick properties of the
material disclosed by Natarajan by adding a non-stick coating
as disclosed by Johnstone” (answer, seventh page).
In order for a prima facie case of obviousness to be
established, the teachings from the prior art itself must
appear to have suggested the claimed subject matter to one of
ordinary skill in the art. See In re Rinehart, 531 F.2d 1048,
1051, 189 USPQ 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.
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