Appeal No. 2005-1472 Page 4
Application No. 09/750,984
subject matter would have been obvious within the meaning of 35
U.S.C. § 103 on this record. See In re Oetiker, 977 F.2d 1443,
1445, 24 USPQ2d 1443, 1444 (Fed. Cir. 1992); In re Piasecki, 745
F.2d 1468, 1471-1472, 223 USPQ 785, 787-788 (Fed. Cir. 1984).
In both of the rejections advanced by the examiner, the
examiner relies on alleged admitted prior art for the asserted
teaching or suggestion of the tape construction as specified in
claim 1.2 As evident by a review of page 9 of the brief, a
fundamental flaw in both of the examiner’s rejections is made
manifest by the examiner’s continued reliance on all of the
material presented at page 3, lines 10-17 of appellants’
specification as admitted prior art. In this regard, appellants
(brief, page 9) have unmistakably refuted the examiner’s position
that the entirety of the portion of the specification referred to
by the examiner represents an admission of prior art. In
2 In the rejection of product claims 1-9 and 11-13, the
applied Alegre reference is relied upon by the examiner for
evidencing the use of a notch (serration) feature, a matter the
examiner acknowledges as only being relevant to the subject
matter of dependent claim 3 wherein a serrated cut edge is
recited. See, e.g., the sentence bridging pages 3 and 4 and the
sentence bridging pages 4 and 5 of the answer. Regarding the
examiner’s rejection of method claim 10, the examiner (answer,
page 7) states that “it is the admission, not the Freedman
disclosure, that the Examiner is relying upon to disclose the
“key limitation” that “it is accomplished with the adhesive tape
of claim 1."
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