Appeal No. 2004-1586
Application No. 10/132,863
have been led to distribute hole punching devices, especially
those useful for making unique shape holes suggested by, e.g.,
Sports Pub, to business or commercial entities as required by
claims 8 and 9 since the business or commercial entities would
not be able to carry out their function absent the hole punching
devices.7
In reaching the above determination, we recognize that to
punch out the indicia in the sub-sections of the card taught by
Edge and Sports Pub, business entities, upon receiving the key
chain assembly above from a customer, are expected to remove the
card from the key tag. Moreover, before returning the key chain
assembly to the customer, the business entities are expected to
reinsert the card into the key tag so that the card can be
fixedly secured to the key chain as indicated supra. However,
the claims on appeal, by virtue of using “comprising” in their
preamble, do not preclude the above additional steps. See In re
Baxter, 656 F.2d 679, 686-87, 210 USPQ 795, 802-03 (CCPA 1981).
Thus, for the reasons set forth in the Answer and above, we
concur with the examiner that the collective teachings of the
applied prior art references would have rendered the subject
7 Lemberg and Kanzelberger are deemed unnecessary and
cumulative.
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