Ex Parte Inoue et al - Page 4



          Appeal No. 2005-2508                                                              
          Application No. 09/874,314                                                        
          examiner established a reasonable expectation of success (Brief,                  
          pages 6, 8 and 11).  Appellants further argue that the examiner                   
          has not provided any specific factual evidence to conclude that                   
          one of ordinary skill is aware that the wide variety of                           
          tackifiers are suitable for being incorporated into rubber based                  
          pressure sensitive adhesives (Reply Brief, page 4).                               
                Appellants’ arguments are not persuasive.  Contrary to                      
          appellants’ argument, one of ordinary skill in this art would                     
          have been well aware of appropriate tackifiers for use with                       
          rubber-based pressure-sensitive adhesives.1  This is evidenced by                 
          both Dobashi and EP ‘585.  Dobashi teaches that the tackifier for                 
          rubber-based PSA compositions is preferably a terpene resin or                    
          terpene-phenol resin, including hydrogenated resins (col. 4, l.                   
          63-col. 5, l. 4).  Furthermore, Dobashi teaches that tackifiers                   
          may include “aliphatic, aromatic or allcyclic [sic, alicyclic]                    
          petroleum resins” including those modified by hydrogenation (col.                 
          9, ll. 35-44), which tackifiers generically include the claimed                   
          “hydrogenated aliphatic/aromatic copolymer petroleum resins” (see                 

                1                                                                           
                1We note that appellants disclose that incorporation of a                   
          tackifier is usually effective in improving adhesive strength                     
          and, in addition to the claimed copolymer, “[o]ne or more                         
          appropriate tackifiers known for use in pressure-sensitive                        
          adhesives may be used” (specification, page 10, last paragraph,                   
          italics added).                                                                   
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