Appeal No. 1999-2630
Application 08/341,464
advantage of eliminating the need for relatively thick layers
of paper, plastic or foil to neutralize the tackiness of the
adhesive (see column 5, lines 60 through 65).
In proposing to combine Panza, Imsande and Cherrin to
reject claim 6, the examiner concludes that “[t]o employ a
masking means as taught by Imsande and Cherrin on the Panza et
al device would [have been] obvious to one of ordinary skill in
the art in view of the recognition that such a feature would be
thinner and/or
more economically efficient” (answer, page 7). Presumably,
this modification would involve the replacement of Panza’s
fingerlift strips 20 and 23 by printed adhesive-inhibiting
masking means, thereby arriving at the subject matter recited
in claim 6.
The test for obviousness is not whether the features of a
secondary reference may be bodily incorporated into the
structure of the primary reference; nor is it that the claimed
invention must be expressly suggested in any one or all of the
references. Rather, the test is what the combined teachings of
the references would have suggested to those of ordinary skill
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