Ex Parte Smith et al - Page 8




              Appeal No. 2005-1595                                                                     8               
              Application No. 09/870,180                                                                               


                    For the foregoing reasons and the reasons set forth in the Answer, we affirm the                   
              examiner’s decision rejecting claims 31, 33, 34 and 36 under 35 U.S.C. § 103(a) as                       
              unpatentable over the combined disclosures of Chau and Stamm.                                            
                    We turn next to the examiner’s rejection of claims 22 through 30, 32 and 35 under                  
              35 U.S.C. § 103(a) as unpatentable over the combined disclosures of Chau, Stamm and                      
              Rowland.  The disclosures of Chau and Stamm are discussed above.  As acknowledged                        
              by the examiner (Answer, page 5), Chau and Stamm are silent as to employing the                          
              claimed transparent radiation curable pressure-sensitive adhesive.                                       
                    To remedy this deficiency, the examiner relies on the disclosure of Rowland.  Id.  It              
              appears to be the examiner’s position that the UV curable transparent acrylic resin taught               
              by Chau necessarily or inherently has pressure-sensitive adhesive properties as                          
              evidenced by Rowland.  See the Answer, pages 5-6.   However, the columns, lines and                      
              examples of Rowland referred to by the examiner only teach or suggest applying a                         
              pressure-sensitive adhesive material to a specifically formed base layer having cube                     
              corner cavities coated with a reflective material.  As argued by the appellants (Brief, page             
              4), nothing in Rowland referred to by the examiner teaches that the UV curable resin                     
              taught by Chau has pressure-sensitive adhesive properties or that its pressure-sensitive                 
              adhesive is radiation or UV curable.  See also Rowland, column 4, lines 42-50, column 7,                 
              lines 63-70 and 74-75, column 8, lines 1-2 and the Examples.                                             









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