Appeal No. 95-0761
Application 08/050,511
Rosenfeld 4,028,165 June 7, 1977
Arnold et al. (Arnold) 4,308,310 Dec. 29, 1981
Incremona et al. (Incremona) 4,919,994 Apr. 24, 1990
Hochner 934,614 Oct. 2, 1973
(Canadian patent)
THE REJECTIONS
Claims 1-16 stand rejected under 35 U.S.C. § 103 as being unpatentable over Arnold,
Hochner or Rosenfeld, each in view of Incremona. These claims also stand rejected under 35
U.S.C. § 112, first paragraph, written description and enablement.2
OPINION
We have carefully considered all of the arguments advanced by appellant and the examiner
and agree with appellant that the aforementioned rejections are not well founded. Accordingly,
these rejections will be reversed.
Rejection under 35 U.S.C. § 103
Arnold discloses a dry transfer decal comprised of, in order, a backing film, a urethane
film, printed ink layers, an optional clear lacquer layer, and a screened or printed high tack
adhesive layer (Fig. 1; col. 1, lines 54-59; col. 2, line 43 - col. 3, line 53). The urethane film
2The examiner’s answer includes an objection to the specification under 35 U.S.C. § 112,
first paragraph, but does not include an associated rejection. Since claims 1-16 were rejected
under 35 U.S.C. § 112, first paragraph, in the final rejection (paper no. 4) and the examiner has
not withdrawn the rejection, it appears that the omission of the rejection of claims 1-16 under 35
U.S.C. § 112, first paragraph, in the examiner’s answer was inadvertent. Thus, we consider
claims 1-16 to be rejected under 35 U.S.C. § 112, first paragraph.
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