Appeal No. 2004-1869
Application No. 09/738,591
prior to laminating the polymer film to the metal surface flows from the references when one
takes into account the treatment options one of ordinary skill in the art would have recognized
when practicing the modification in the process of Bentley.
We conclude that the Examiner has established a prima facie case of obviousness with
respect to the subject matter of claims 1-4, 20, 22, 23, 26 and 28 which has not been sufficiently
rebutted by Appellant.
Obviousness of Claims 5 and 28
The Examiner rejects claims 5 and 28 as obvious over Bentley in view of Kaneko and
further in view of McCulloch. The claims stand or fall together (Brief, p. 3). We select claim 5
to represent the issues on appeal in accordance with 37 CFR § 1.192(c)(7)(2003).
Claim 5 further limits claim 1 to require applying an adhesive substance to the surface of
the film and that the step of adhering the plurality of polar particulates comprises pressing the
plurality of polar particulates into the adhesive substance. The Examiner finds that Bentley and
Kaneko are silent towards applying the polar particulates by pressing them into an adhesive
applied to the surface of the polymer film (Answer, p. 5). The Examiner cites McCulloch for its
teaching of applying silica particulates to an adhesive coated surface by blowing the particulates
onto the tacky adhesive coating which necessarily presses the particulates into the adhesive
(Answer, p. 5).
Appellant argues that there is no suggestion to employ a tacky adhesive layer in the
combination of Bentley and Kaneko in order to adhere the silica particulates to the polymer film
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