Appeal No. 2006-0468
Application 09/885,395
submit “that Bingham fails to provide the motivation to combine documents that is missing from
Stahl in view of [Silver], as noted herein above” (id., pages 8-9).
The examiner responds that one of ordinary skill in this art would have modified the
pressure-sensitive adhesive layer 16 of Stahl with the elastomeric microsphere adhesives of
Silver in order to minimize loss of the layer by transfer upon repositioning of the label on a
substrate (answer, pages 4 and 6-7; final action, pages 3-4). The examiner further points out that
there is no teaching in Stahl that the heat sensitive pressure sensitive adhesive is a “hot melt
adhesive” as this term is used in the art ( answer, pages 5 and 6).
We find substantial evidence in the combined teachings of Stahl and Silver supporting
the examiner’s position. We find that contrary to appellants’ contention, Stahl would have
disclosed to one of ordinary skill in this art that the pressure-sensitive adhesive layer 16 “is
preferably an acrylic ester polymer or copolymer,” among others, which permits repositioning of
the label (e.g., col. 3, ll. 16-18). We further find that Silver would have disclosed to this person a
pressure sensitive adhesive containing elastomeric polyacrylate ester microspheres which can be
applied to, among others, plastic substrates by spraying or in sheet form, and permits the
substrate to be repositioned with low transfer to the substrate (e.g., col. 1, ll. 9-14, col. 3, ll. 12-
45, and col. 8, ll. 61-65). Indeed, one of ordinary skill in this art routinely following the
combined teachings of Stahl and Silver and further with Bingham, would have been led to use
the elastomeric polyacrylate ester microsphere containing pressure sensitive adhesive of Silver
as a preferred polyacrylate ester pressure sensitive adhesive for pressure-sensitive adhesive layer
16 of Stahl in the reasonable expectation of repositionally applying the label containing such
layer in the manner taught by Stahl. Thus, one of ordinary skill in the art would have reasonably
arrived at the claimed invention encompassed by appealed claims 19 and 26 as we have
interpreted these claims above, including every limitation thereof arranged as required therein,
without recourse to appellants’ specification. See In re Dow Chem. Co., 837 F.2d 469, 473, 5
USPQ2d 1529, 1531 (Fed. Cir. 1988) (“The consistent criterion for determination of obviousness
is whether the prior art would have suggested to one of ordinary skill in the art that [the claimed
process] should be carried out and would have a reasonable likelihood of success viewed in light
Richard J. Lewis, Sr., revisor, New York, Van Nostrand Reinhold Company, 1997).
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