Appeal No. 2006-0059 Page 10
Application No. 10/139,397
indication that when peeling the labels at time of use that the excess adhesive
attached to the upper layer (UL) creates a problem with sticky hands as suggested by
the Examiner. We also agree with Appellants, Brief pages 18-19, that the solution
provided by the present claims is not the only possible solution to preventing sticky
hands. As such, we do not agree with the Examiner's obviousness conclusion as
outlined in the Final Rejection and the Answer.
The speculative position asserted by the Examiner is merely an unsupported
opinion of the Examiner and such is not enough to establish the obviousness of the
claimed subject matter within the meaning of 35 U.S.C. § 103. Rather, as our
reviewing court has made clear, the Examiner must identify a particular suggestion,
reason or motivation to combine references or make the proposed modification in a
manner so as to arrive at the claimed invention. See In re Rouffet, 149 F.3d 1350,
1359, 47 USPQ2d 1453, 1459 (Fed. Cir. 1998). Any such showing must be clear and
particular. See In re Dembiczak, 175 F.3d 994, 999, 50 USPQ2d 1614, 1617 (Fed.
Cir. 1999). In the present case, sufficient evidence to establish such a suggestion is
not made manifest in the Examiner’s stated rejection based on the teachings of the
applied references. We conclude that the Examiner has failed to establish a prima
facie case of obviousness with respect to the subject matter of appealed claims
28-41, 43, 44, 47-51, 77, 78, and 80.
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