Appeal No. 98-1254
Application No. 08/579,588
a carrier sheet containing a plurality of detachable
subsections. Each subsection is provided with indicia 3 which
may "include various letters and symbols" (column 4, lines 44
and 45). After a desired subsection is removed from the
carrier sheet it is placed on the T-shirt and heated with an
iron 41 in order to transfer the indica from the subsection to
the T-shirt. Absent the appellant's own disclosure we can
think of no cogent reason why one of ordinary skill in this
art would have been motivated to single out the feature of
transferable ink from the disparate teachings of Holoubek and
incorporate it into the greeting card of Feuer in the manner
proposed by the examiner. In our view, the examiner has
impermissibly relied upon the appellant’s own teachings in
arriving at a conclusion of obviousness. As the court in
Uniroyal, 837 F.2d at 1051, 5 USPQ2d at 1438 stated "it is
impermissible to use the claims as a frame and the prior art
references as a mosaic to piece together a facsimile of the
claimed invention."
With respect to claims 4 and 7-9, we have carefully
reviewed the teachings of Kennedy but find nothing therein
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