Appeal No. 2005-0214
Application No. 09/742,653
disclosure, the examiner determines that there is no suggestion
in the specification that indicates that results, such as air-
egress, repositionability, and slidability, depend on the
position of the non-adhesive material forms relative to the
adhesive surface of the adhesive layer. Answer, page 6. The
examiner also concludes that “it is functionally equivalent to
place the non-adhesive forms either fully or partially embedded
into the release liner”. Answer, page 6.
We disagree with the examiner’s aforementioned reasoning.
The examiner relies upon appellant’s own specification for a
teaching of equivalency, rather than any teaching in
Rusincovitch. This approach fails in two ways. Firstly, no
teaching exists (either in appellant’s disclosure or in
Rusincovitch) that indicates equivalency between (1) non-adhesive
material forms on the surface (as taught in Rusincovitch), (2)
non-adhesive material forms partially embedded into the surface,
and (3) non-adhesive material forms fully embedded into the
surface. Secondly, and more importantly, the examiner cannot
rely upon appellant’s own teachings as guidance. Such reliance
amounts to impermissible hindsight derived from appellant’s own
disclosure (W.L. Gore & Assocs. v. Garlock, Inc., 721 F.2d 1540,
1553, 220 USPQ 303, 312-313 (Fed. Cir. 1983), cert. denied, 469
U.S. 851 (1984)) rather than some teaching, suggestion or
incentive derived from the prior art (ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.
Cir., 1984)).
On page 7 of the answer, the examiner also states that it
would have been obvious to have positioned the non-adhesive
material forms 18 of Rusincovitch either partially or fully
embedded into the release liner 20 insofar as the desired
physical properties of repositionability, air egress, and
slidability are maintained. Again, the examiner relies upon
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