Ex parte SWARTZ et al. - Page 9





                        Appeal No. 97-0171                                                                                                                                                                         
                        Application No. 08/187,290                                                                                                                                                                 



                        address or zip code and not the actual document which is encoded as a bar code.                                                                                                            

                        Therefore, the text of the letter is not edited as the Examiner implies.  Clearly, this is not a                                                                                           

                        reasonable interpretation of the limitations as set forth in claim 1.                                                                                                                      

                        The Examiner responds to appellants’ arguments stating that                                                                                                                                

                                     The Zip Code information, coded or uncoded, is considered machine readable                                                                                                    
                                     data. Since the Zip Code data is in alphanumeric forms, it is highly probable and                                                                                             
                                     obvious that this type of information could also be input[t]ed into a computer file or                                                                                        
                                     database using an optical character[s] recognition [OCR] reader. From Mihm's                                                                                                  
                                     disclosure, it is clear that the barcoder 2 could read and interpret this data                                                                                                
                                     information. The only difference is that Mihm is silent about the use of an optical                                                                                           
                                     device for input this information in the barcoder 2.                                                                                                                          
                                                                                                         .                                                                                                         
                                                                                                         .                                                                                                         
                                                                                                         .                                                                                                         
                                     In this case, Duthion discloses the method of converting music information in                                                                                                 
                                     barcode form into audible sound. Bockholt, in addition, extends Duthion's teaching                                                                                            
                                     to print such musical information as a code on a sheet paper along with text                                                                                                  
                                     information. Mihm, further extends this teaching to allow one to edit such                                                                                                    
                                     information and printed as a barcode on a sheet of paper. With the motivation                                                                                                 
                                     provided in page 6 of the Final Office Action and the reasons stated above, the                                                                                               
                                     examiner firmly believes that the proposed combination has established a prima                                                                                                
                                     facie case of rejection.  (See answer at pages 8-9.)                                                                                                                          

                                     As stated above, we disagree with the Examiner’s conclusion of obviousness and                                                                                                

                        the statement of the motivation for the combination of references.  Therefore, we will not                                                                                                 

                        sustain the rejection of claim 1.  Similarly, we will not sustain the rejection of independent                                                                                             

                        claim 18 for the same reasons as above.  Since we will not sustain the rejection of                                                                                                        

                        independent claims 1 and 18, we will not sustain the rejection of dependent claims 3, 8, 9                                                                                                 

                        and 19.                                                                                                                                                                                    




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