Appeal 2006-2307
Application 10/370,686
Given the above and for reasons more fully set forth in the Answer, we
agree with the Examiner that JP05-271645 renders the subject matter of
representative claim 20 prima facie anticipated. Moreover, we note that a
disclosure that anticipates, prima facie, under 35 U.S.C. § 102 also renders
the claim prima facie unpatentable under 35 U.S.C. § 103, for "anticipation
is the epitome of obviousness." Jones v. Hardy, 727 F.2d 1524, 1529, 220
USPQ 1021, 1025 (Fed. Cir. 1984). See also In re Fracalossi, 681 F.2d
792, 794, 215 USPQ 569, 571 (CCPA 1982); In re Pearson, 494 F.2d 1399,
1402, 181 USPQ 641, 644 (CCPA 1974).
Appellant contends that the blended polymer product of JP05-271645
does not show pressure sensitive adhesiveness after production thereof; that
is, when it is formed. This argument is not persuasive of any error in the
Examiner’s anticipation/obviousness rejection for reasons stated by the
Examiner in the Answer and as further articulated herein. In this regard and
as correctly noted by the Examiner, representative appealed claim 20 does
not require that the pressure sensitive adhesive possess any particular
quantifiable level of adhesiveness in general or a particular degree of
adhesion as soon as formed. Moreover, Appellant’s arguments concerning
the lack of a description of the less than 500 nm averages particle diameter
required for the pressure sensitive adhesive polymer emulsion component of
the blend of representative claim 20 is not well taken. This is because the
Examiner specifically refers to comparative Example 6 of JP05-271645 for
exemplification of such a product and Appellant has not even addressed that
comparative Example disclosure in arguing against the Examiner’s
anticipation rejection over JP05-271645. In addition, Appellant “teaching
away” contention has no merit in opposition to the anticipation prong of the
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