Appeal No. 2004-1831
Application No. 09/338,095
reason, no basis exists for the examiner’s conclusion that it
would have been obvious to vary this length based on routine
optimization. See In re Antonie, 559 F.2d 618, 620, 195 USPQ 6,
8-9 (CCPA 1977). Also contrary to the examiner’s apparent belief
(e.g., see page 7 of the answer), Yoshino contains no teaching or
suggestion of any advantage to be expected from shortening
patentee’s distal portion dimension in the manner required by the
claim under review. On the other hand, it is apparent from
Figure 1 of the patent that shortening the distal portion would
dispose adhesive surface c of adhesive tape 3 on top of an
underlying layer of film 2, thereby creating potential
disadvantages (e.g., the unintended and undesirable adhesion of
surface c to underlying film 2 with the concomitant possibility
of damaging the underlying film when pulling the adhesive surface
away therefrom as the masking material is unrolled during use).
Under these circumstances, it is apparent that the
examiner’s obviousness conclusion lacks the requisite suggestion
for the proposed modification as well as the requisite reasonable
expectation that the proposed modification would be successful.
See In re O’Farrell, 853 F.2d 846, 850-51, 7 USPQ2d 1673, 1680-81
(Fed. Cir. 1988). It follows that we cannot sustain the section
103 rejection of independent claim 3 or of the claims which
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