Appeal No. 2005-0214
Application No. 09/742,653
appellant’s own specification and concludes that because
appellant’s specification shows no difference between such
properties when the non-adhesive material forms are either fully
or partially embedded, it can be assumed that modifying the
product of Rusincovitch in this matter will also maintain these
properties. For the reasons stated in the previous paragraph, we
cannot agree with this logic.
We additionally refer to page 2 of the reply brief, wherein
appellant argues that Rusincovitch teaches that the non-adhesive
forms are printed on the surface of the release liner. Appellant
states that Figure 4B of Rusincovitch shows the non-adhesive
forms are on the surface, and are not embedded into the release
liner. Appellant also states that Rusincovitch further
discloses, at column 6, lines 60-61, that the printed ink spacers
protrude from the flat surface of the release liner. As
discussed above, the examiner recognizes that Rusincovitch does
not inherently disclose non-adhesive forms “embedded into” the
top release surface of the release liner. The examiner relies
upon appellant’s own specification in an effort to conclude that
Rusincovitch suggests to modify the position of the non-adhesive
material forms such that they are “embedded into” the top release
surface. These circumstances lead us to conclude that the
examiner, in making his Section 103 rejection, has fallen victim
to the insidious effect of hindsight syndrome wherein that which
only the inventor has taught is used against its teacher. W.L.
Gore & Assocs. V. Garlock, Inc., 721 F.2d 1540, 1553,
220 USPQ 303, 312-13 (Fed. Cir. 1983), cert. denied, 469 U.S. 851
(1984).
In view of the above, we therefore reverse the rejection.
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