Appeal No. 98-1254
Application No. 08/579,588
Claims 4 and 7-9 stand rejected under 35 U.S.C. § 103(a)
as being unpatentable over Feuer in view of Holoubek and
Kennedy.
Both of these rejections are bottomed on the examiner's
view that:
Feuer discloses the claimed greeting card having
a removable decal except that the decal is not
printed with a transferable ink. Holoubek teaches a
removable decal via perforations being printed with
a transfer-able ink. Note that the decal is being
transferred from one surface to another surface. It
would have been obvious to one of ordinary skill in
the art to modify the decal of Feuer to include a
transferable ink and perforations as taught by
Holoubek in order to transfer the image on the decal
to another surface. [Answer, page 3.]
We will not support the examiner's position. It is well
settled that it is the teachings of the prior art taken as a
whole which must provide the motivation or suggestion to
combine the references. See Uniroyal, Inc. v. Rudkin-Wiley
Corp., 837 F.2d 1044, 1051, 5 USPQ2d 1434, 1438 (Fed. Cir.
1988) and Interconnect Planning Corp. v. Feil, 774 F.2d 1132,
1143, 227 USPQ 543, 550-51 (Fed. Cir. 1985). Here, we find no
such suggestion.
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