Ex parte JOSEPH - Page 5




          Appeal No. 97-1631                                          Page 5           
          Application No. 08/245,267                                                   


          rejection is improper and will be overturned.  In re                         
          Rijckaert, 9 F.3d 1531, 1532, 28 USPQ2d 1955, 1956 (Fed. Cir.                
          1993).  It is against this background that we consider the                   
          examiner’s rejection.                                                        


               At the outset, we observe that the rejection lacks                      
          meaningful analysis.  The appellant’s comment about the                      
          examiner’s first rejection, viz., “[t]he Examiner’s rationale                
          for the rejection is unclear,” (Amendment B at 7), applies                   
          similarly  to the instant rejection.  The examiner fails to                  
          map the claim language to the disclosures of Guthmueller,                    
          Badgley, or Abe.  He also neglects to indicate what language                 
          is missing from any of the references.  In addition, the                     
          examiner omits an explanation of how he proposes to combine                  
          the references or why one of ordinary skill in the art would                 
          have been motivated to do so.                                                


               The examiner’s rejection repeats the rejected claims and                
          adds three comments.  First, the examiner opines,                            
          “Guthmueller, in Fig. 1 teaches a coded mask for reading bar                 
          code indicia.  Coded mask a ‘symbols’ [sic] are shown by                     







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