Appeal No. 2001-1862
Application No. 09/102,044
used points. Therefore, appellants’ argument that Your Choice teaches away since the
employer maintains control over the card is not persuasive. (See brief at page 11.)
With this said, we also do not find support for the examiner’s position with respect to the
employee adding funds to the Your Choice card. (See answer at pages 32-34.)
Turning to the language of independent claim 53, we find that the claim merely sets
forth a positive limitation that the account is only accessible to the recipient and a
negative limitation that the purchaser is unable to add funds to the account beyond the
initial issue amount. Here, we find that Your Choice teaches both limitations. It
teaches the values are set at the time of issue and the recipient can check the available
funds thereby having access to the account. Therefore, appellants’ argument is not
persuasive.
Appellants argue that the Office cannot shift the burden to appellants to prove
that the many modifications would have not been obvious. (See brief at pages 11 et
seq.) We agree with appellants. While the examiner has set forth many old and well-
known facts in the credit, debit and prepaid card relevant arts and taken Official Notice
thereof, appellants did not controvert these individual facts until the Reply brief.
Therefore, we will accept them as admitted. With this said, appellants have continually
traversed the combination of these teachings and facts. We agree with appellants that
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