Appeal No. 2000-1383 Page 4
Application No. 08/817,391
portion of a rounded corner of a non-rectangular body, but not onto the two long sides (Fig. 4).
The Examiner offers no reasoning on the issue of whether it would have been obvious to one of
ordinary skill in the art to glue the laminate onto the two long sides as required by claim 7.
Furthermore, the Examiner offers no evidence of a reason, suggestion or motivation to
machine the required laminate coated carrier to obtain the specific profiles of claim 7. The
Examiner merely states that it is well known in the manufacturing art to machine a pressed board
to obtain a given profile and it would have been obvious to one having ordinary skill in the art at
the time of the invention to modify Munk’s process by machining the pressed board to obtain the
profile since the modified procedure eliminates the need for a mold having a special mold shape
(Answer, page 5). This explanation provides no evidence of a reason, suggestion, or motivation
to obtain the very specific profiles required by claim 7, i.e. a dilation, transition or finishing
profile.
Where the legal conclusion of obviousness is not supported by facts it cannot stand. In re
Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178 (CCPA 1967). We conclude that the
Examiner has failed to establish a prima facie case of obviousness with respect to the subject
matter of claim 7. As claims 3, 4, 6 and 8-14 contain each and every limitation of claim 7, the
Examiner has failed to establish a prima facie of obviousness with respect to the subject matter
of these claims as well.
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