Appeal No. 2003-0014 Page 7
Application No. 08/858,022
the Iwamoto method, which refutes the examiner’s contention on that matter. We also
again note that Iwamoto desires to re-use the processing carrier without replacing the
adhesive layer, and there is no evidence to support a conclusion that the modification
proposed by the examiner would not subvert this objective, which in our view would
operate as a disincentive for the artisan to make such a change.
A prima facie case of obviousness is lacking, and the rejection of independent
claim 72 and dependent claims 73-78 cannot be sustained.
Independent claim 79 requires, inter alia, that the coupling member be applied to
the surface of the processing carrier “using a roller.” It is the examiner’s position that,
although such a teaching is lacking in Iwamoto, it would have been obvious to do so “to
ensure uniform bonding of the sticky layer to the carrier,” because the reference
teaches that it is known to apply sheet-like material to a surface using a roller (Paper
No. 26, page 3). We are not persuaded that it would have been obvious to apply one
item by means of a roller simply because the reference discloses the application of
another item by means of a roller, and we further note that no evidence has been
adduced by the examiner in support of this position. Especially when considering the
differences in the method disclosed in Iwamoto and that recited in claim 79, we fail to
perceive any teaching, suggestion or incentive which would have led one of ordinary
skill in the art to use a roller to apply the coupling member to the surface of the
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