Appeal No. 2006-0059 Page 7
Application No. 10/139,397
take-up roll as suggested by Roou or Stahl to remove the undesired
substrate layer, i.e., the mask substrate, to eliminate the need for
manually removing the mask substrate thereby preventing the user's
hands from becoming sticky with the excess adhesive on the mask
substrate.
As to Claims 28 and 77, Bradshaw does not disclose mounting
the take-up roll on the cartridge. Koyama et al. discloses an apparatus
having a removable cartridge which includes a take-up roll and a supply
roll to provide simultaneous replacement of the supply roll and the
take-up roll (Figure 1, cartridge C, pay-out reel 11, take-up winding reel
12). When modifying the apparatus of Bradshaw as noted above to
include the use of a take-up roll, it would have been obvious to one of
ordinary skill in the art at the time of the invention to include the take-up
roll on the removable cartridge containing the first and second feed rolls
to enable the operator to simultaneously replace the feed rolls and the
take-up roll.
(Answer, pages 11-12).
To hold an invention obvious in view of a combination of references, there
must be some suggestion, motivation, or teaching in the prior art that would have led
a person of ordinary skill in the art to select the references and combine them in a
way that would produce the claimed invention. See, e.g., Heidelberger
Druckmaschinen AG v. Hantscho Commercial Prods., Inc., 21 F.3d 1068, 1072, 30
USPQ2d 1377, 1379 (Fed. Cir. 1994) (When the patent invention is made by
combining known components to achieve a new system, the prior art must provide a
suggestion, or motivation to make such a combination.); Northern Telecom v.
Datapoint Corp., 908 F.2d 931, 934, 15 USPQ2d 1321, 1323 (Fed. Cir. 1990) (It is
insufficient to establish a prima facie case of obviousness based on prior art
references disclosing the components of a patented device, either separately or used
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