Ex parte CHRISTY - Page 9




                Appeal No. 97-0178                                                                                                      
                Application 08/355,326                                                                                                  


                of printing” or imaging process for both code(s) and overlay as appellant argues.  (Id. )                               

                The benefits asserted by appellant do not necessarily follow from the invention as claimed.                             
                Different methodologies may still have been required depending on the codes and                                         
                materials used.  Therefore, this argument is not persuasive as discussed above.                                         
                Furthermore, we do not agree with appellant that the Examiner has “isolate[d] one                                       
                particular teaching in Diekemper.”  (See reply brief at page 2.)  The answer and final                                  
                rejection have clearly set forth the Examiner’s position with respect to the combination of                             
                the teachings of the two references and the motivations for the combination of teachings.                               






                        Both references teach the basic aspect of the claimed invention that when                                       
                encoding additional data it is further desirable to have the additional data encoded so                                 
                that it is not visible within the visible range of the spectrum.                                                        
                        With respect to claims 1 and 2, appellant argues that Fisun does not discuss "the                               
                suitability of infra-red light . . . but rather in the specification . . . specifically refers to UV                    
                light. . . .  Fisun et al. provide no teaching whatsoever of either the use of a security block . .                     
                .  and either a security block or bar coding overlaid one over the other.”  (See brief at page                          
                6.)   As discussed above, Fisun teaches the use of two codes, one overlaid on the other.                                


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