Ex parte BACON - Page 6




          Appeal No. 97-3998                                                          
          Application 08/302,168                                                      


               More particularly, Pitts’ provision of slits 106 or                    
          258(a-d) meets the relatively broad guide-providing step                    
          recited in claim 16.  In this regard, Pitts’ slits constitute               
          guides to the same extent that the appellant’s notch 240 in                 
          nib 230 constitutes a guide (see page 7 and Figure 2 of the                 
          appellant’s disclosure).  This being the case, Pitts’ steps of              
          inserting the edge of a sheet into the slit (wherein it                     
          engages the slit side walls) and drawing it therethrough meet               
          the strand positioning and drawing steps recited in claim 16.               
          Thus, the appellant’s contention that the subject matter                    
          recited in claim 16 is not anticipated by Pitts is not well                 
          taken.                                                                      
               Claim 24, on the other hand, requires the guide to be in               
          a housing partially enclosing the marking element.  The only                
          structures disclosed by Pitts which arguably correspond to                  
          such a guide are the openings 108, 256(a-d) in barrel/housing               
          102, 252.  There is no teaching in Pitts, however, that the                 
          sheet being marked is ever positioned against these openings.               
               The examiner’s contention that the use of the Pitts                    
          device would include, presumably under principles of                        
          inherency, some contact between the sheet and the openings in               
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