Appeal No. 2003-1516
Application 09/569,700
application of adhesive layer 24 to apply or couple the thus formed article of manufacture of
label technology to the application surface of the disc through adhesive layer 24.
Thus, the examiner’s reliance on low-tack adhesive 118 with respect to these
embodiments does not result in an embodiment that is a description of the claimed invention
under § 102(b) with respect to either of appealed claims 1 and 19. See generally, In re Arkley,
455 F.2d 586, 587, 172 USPQ 524, 526 (CCPA 1972) (“[F]or the instant rejection under
35 U.S.C. 102(e) to have been proper, the . . . reference must clearly and unequivocally disclose
the claimed compound or direct those skilled in the art to the compound without any need for
picking, choosing, and combining various disclosures not directly related to each other by the
teachings of the cited reference. Such picking and choosing may be entirely proper in the making
of a 103, obviousness rejection, where the applicant must be afforded an opportunity to rebut
with objective evidence any inference of obviousness which may arise from the similarity of the
subject matter which he claims to the prior art, but it has no place in the making of a 102,
anticipation rejection.”).
In view of the requirement in Tsai that the adhesive for attaching the releasable support
sheet 12 must be less aggressive than the adhesive of adhesive layer 24 which retains marker
elements 16 and 18 on the application surface of the disk, the disclosure of the low-tack adhesive
would not, on this record, have provided one of ordinary with the suggestion that the entirety of
the article of manufacture of label technology is removable from the application surface of the
disk, and thus does not provide a factual foundation for prima facie obviousness under § 103(a)
with respect to either or appealed claims 1 and 19. See B.F. Goodrich Co. v. Aircraft Braking
Sys. Corp., 72 F.3d 1577, 1582, 37 USPQ2d 1314, 1318 (Fed. Cir. 1996) (“When obviousness is
based on a particular prior art reference, there must be a showing of a suggestion or motivation to
modify the teachings of that reference. [Citation omitted.] This suggestion or motivation need not
be expressly stated. [Citation omitted.]”).
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