Appeal No. 2005-2508
Application No. 09/874,314
claim 1 on appeal). Accordingly, the claimed species of
tackifier would have been suggested to one of ordinary skill in
this art at the time of appellants’ invention by the teachings of
Dobashi alone. Additionally, EP ‘585 provides further evidence
that the claimed tackifiers were well known in the PSA art by
teaching tackifiers useful with rubber-based PSA compositions
where the tackifiers include aliphatic/aromatic petroleum resins
which may be hydrogenated (page 3, ll. 5-10, and page 4, l. 7).
Appellants argue that there is no disclosure of any use for
the tapes produced according to EP ‘585, and thus there is no
reason for combining this reference with Dobashi, which is
directed to the field of protective automobile coatings (Brief,
page 8; Reply Brief, pages 7-8).
This argument is not well taken for several reasons. First,
EP ‘585 does disclose a use for its tapes (i.e., as packaging
tape; see page 4, l. 54, and page 5, l. 15). Secondly, the end
use taught by EP ‘585 is not the reason for its combination with
Dobashi, but the reason or suggestion for combination rests with
the field of rubber-based pressure sensitive adhesive
compositions and the tackifiers used therein to improve the
adhesive strength, as taught by both Dobashi and EP ‘585.
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