Appeal No. 2005-2508
Application No. 09/874,314
Appellants argue that Dobashi “teaches away” from the use of
the tackifiers taught by EP ‘585 because the amount of tackifiers
taught by EP ‘585 is above the maximum amount taught by Dobashi
before undesirable results occur (Brief, pages 12-13; Reply
Brief, page 10).
This argument is also not persuasive. The minimum amount of
tackifier taught by EP ‘585 (33%; see page 4, ll. 15-16) is very
close to the maximum amount taught by Dobashi (30%; see col. 5,
ll. 8-15). See Titanium Metals Corp. Of America v. Banner, 778
F.2d 775, 783, 227 USPQ 773, 779 (Fed. Cir. 1985)(Amounts that
are very similar would provide an expectation of similar
properties). Furthermore, EP ‘585 does not disclose an absolute
range but teaches that the “ratio of rubber to tackifier in
typical PSA formulations can vary but usually lies between 1:2
and 2:1 by weight” (page 4, ll. 15-16, italics added).
Accordingly, we determine that the teachings of Dobashi do not
“teach away” from the use of the tackifiers of EP ‘585 in the
Dobashi composition. See In re Gurley, 27 F.3d 551, 553, 31
USPQ2d 1130, 1131 (Fed. Cir. 1994).
For the foregoing reasons and those stated in the Answer, we
determine that the examiner has established a prima facie case of
obviousness in view of the reference evidence. Appellants assert
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