Appeal No. 2006-1960
Application No. 10/380,877
adhesive. See Table 1 on page 4 of the Answer, where the examiner
finds that the ADMER adhesive layer (40) of Kato corresponds to the
claimed lamination adhesive (16).
As correctly argued by appellants (Brief, pages 6-7; Reply
Brief, page 6), appellants only disclose ADMER as a suitable
bonding agent for binder layers 15, 25 or 29 (specification, page
10, ¶[0037], and page 14, ¶[0057]), not as a specific material used
for the laminating agent layer 16 or 26. As also correctly argued
by appellants (Brief, pages 8-10; Reply Brief, page 3), the
examiner has not established that the adhesive layer (40) of Kato
would inherently possess a melting point above 130°C. See In re
Robertson, 169 F.3d 743, 745, 49 USPQ2d 1949, 1950-51 (Fed. Cir.
1999)(The examiner, if relying on a theory of inherency, must
provide a basis in fact and/or technical reasoning to reasonably
support a determination that the allegedly inherent characteristic
necessarily flows from the teachings of the prior art). The only
evidence on this record establishes that ADMER adhesives have
melting points above and below 130°C. (Answer, page 9; Brief,
Appendix IX). Thus we determine that the examiner has not
established that the adhesive taught by Kato would necessarily
possess the claimed property.
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