Appeal No. 2003-0014 Page 6
Application No. 08/858,022
will not sustain the rejection of this independent claim or, it follows, of claims 67-71,
which depend therefrom.
Independent claims 84 and 85 contain the same limitation regarding cleaning the
surface of the flexible substrate, and we also will not sustain the rejection of these
claims on the same basis as claim 66. Since claims 86-88 depend from claim 85, the
rejection of those claims also is not sustained.
Independent claim 72 includes the steps of providing a processing carrier,
providing a coupling member having an adhesive layer and a silicone-comprising
surface, first adhering the adhesive layer with the surface of the processing carrier, and
then adhering the first surface of a flexible substrate to the silicone-comprising layer of
the coupling member. The examiner has admitted that Iwamoto fails to disclose or
teach a coupling member with an adhesive layer and a silicon-containing surface, but
expresses the view that for one of ordinary skill in the art to modify the Iwamoto method
so it was in accordance with the claim would have been “an obvious matter of design
choice” since the appellant has not disclosed that the claimed arrangement solves any
stated problem “and it appears that both arrangements would perform equally as well”
(Paper No. 26, page 3). As the appellant has argued, the examiner sets forth no
motivation for making the proposed modification to the Iwamoto method, and therefore
the rejection is fatally defective on this basis. Moreover, as the appellant points out, he
has asserted in the specification that the claimed method does offer an improvement to
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