Appeal No. 1998-0999
Application No. 08/452,737
claimed, thus excluding the business forms described in the
applied prior art. See, e.g., Corning Glass Works v. Sumitomo
Elect. U.S.A., 868 F.2d 1251, 1257, 9 USPQ2d 1962, 1966 (Fed.
Cir. 1989).
Secondly, we determine that the examiner has not
adequately considered the limitations “scene” and “preprinted
label associated with the scene” recited in claim 1. When
these limitations are interpreted consistent with the
application disclosure as indicated supra, they do not embrace
the business form designs described in the applied prior art.
In view of the foregoing, we reverse each of the
foregoing §§ 102 and 103 rejections.
REMAND ORDER
We remand the application to the examiner for appropriate
action as indicated below.
We observe that appellants acknowledge at page 5 of the
specification that a preprinted placemat constructed from a
rectangular sheet of bond paper with either one or two-sided
printing is known. According to appellants (Id.), it was
known that
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