Appeal No. 98-1293 Page 2
Application No. 08/418,833
The appellants’ invention is directed to a system for
decorating textile material (claims 1-12 and 23-27) and to a
greeting card (claims 14, 15, 17-22 and 28). The claims before
us on appeal have been reproduced in an appendix to the Brief.
THE REFERENCES
Baxter et al. (Baxter) 5,086,516 Feb. 11, 1992
Saetre 5,102,171 Apr. 7,
1992
THE REJECTIONS
The following rejections stand under 35 U.S.C. § 103:
(1) Claims 1-12 and 23-27 on the basis of Baxter.
(2) Claims 14, 15, 17-22 and 28 on the basis of Saetre.2
2We would be remiss if we did not point out that in the
first office action (Paper No. 5), the Section 103 rejection
based upon Baxter was not explained with sufficient precision
to allow one to determine the examiner’s rationale, and that
the Section 102 rejection based upon Saetre was provided with
no explanation at all. These shortcomings were magnified in
the final rejection (Paper No. 9), wherein reference merely
was made to Paper No. 5 for an explanation of the rejections,
even though the Baxter rejection was inadequate in the first
instance and even though the Saetre rejection was changed from
Section 102 to Section 103 for several of the claims.
Continuing down this path, in the Answer the examiner referred
to Paper No. 9 for an explanation of both rejections, although
none appeared therein. This conduct violates MPEP 1208, which
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