In re Warmus

BALDWIN, Judge,

dissenting.

I do not agree with the majority opinion affirming the board’s decision in this case. The opinion fails to carefully review several shortcomings of the board’s opinion. I am of the opinion that independent claims 1 and 18 describe a limitation about which the cited references are silent, that limitation is:

placing into the input-output unit at least one additional sale document having spaces for some but not all of said data * * *

There is no suggestion by any of the references of retrieving a proper subset of the data and using it in the context of the invention as a whole.

I am also of the opinion that the § 101 ground of rejection is without merit. In re Chatfield, 545 F.2d 152, 191 U.S.P.Q. 730 (Cust. & Pat.App.1976); In re Noll, 545 F.2d 141, 191 U.S.P.Q. 721 (Cust. & Pat.App. 1976).

In forming the rejection based on § 102 and § 103, the board repeatedly joined § 101. The court has, in the past, proscribed this practice. A comparison between a claim and prior art should not *821dissect the claim but should make the invention as a whole the subject of the comparative analysis. In re Bernhart, 417 F.2d 1395, 57 C.C.P.A. 737, 163 U.S.P.Q. 611 (1969).

If the board believed that the above-stated limitation was suggested by the prior art, it would have said so, rather than rely on the strained and improper basis which it found necessary to employ. The majority reads more into the prior art than the PTO.