Appeal No. 2003-0014 Page 4
Application No. 08/858,022
Iwamoto. It is the examiner’s finding that all of the subject matter recited in the claims
is disclosed by Iwamoto except (1) cleaning the first surface of the flexible substrate,
(2) providing a coupling member with an adhesive layer and a silicone-containing
surface, and (3) applying the coupling member to the carrier using a roller. However,
the examiner is of the view that one of ordinary skill in the art would have found it
obvious to add these features to the Iwamoto system based upon suggestion implicit in
the reference (Paper No. 26, pages 2-4). The appellant argues that this is not the case,
a conclusion with which we agree. Our reasoning follows.
Iwamoto is directed to the same technology as the appellant’s invention.
Looking first to claim 66, as the examiner has admitted, Iwamoto does not include the
step of cleaning the first surface of the flexible substrate prior to adhering that surface
to the processing carrier, as required by this claim. Rather, Iwamoto teaches cleaning
the surface of the processing carrier prior to adhering the flexible substrate thereto.
However, the examiner takes the position that one of ordinary skill in the art “would
have realized that cleaning the first surface of the substrate prior to adhering it to the
carrier would provide the same advantage [as cleaning the surface of the processing
carrier], and would have found it obvious to do so” (Paper No. 26, sentence bridging
1(...continued)
suggestion or inference in the prior art as a whole or from the knowledge generally available to one of
ordinary skill in the art and not from the appellant's disclosure. See, for example, Uniroyal, Inc. v. Rudkin-
Wiley Corp., 837 F.2d 1044, 1052, 5 USPQ2d 1434, 1439 (Fed. Cir.), cert. denied, 488 U.S. 825 (1988).
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