Ex parte BERNARDO et al. - Page 4




          Appeal No. 96-1032                                                          
          Application 08/197,443                                                      


          12 a bar code representing the zip code, but that would be simply           
          a duplication of the information provided by markings 18, and               
          would not meet the terms of the claim.                                      
               On page 5 of the answer, the examiner concludes that the               
          recitation “mail-sorting equipment . . . predetermined code                 
          field” in the last four lines of claim 23 is “just an intended              
          use which is rendered obvious by the teachings of the applied               
          references,” but we fail to see where such use is disclosed or              
          taught by any of the references.                                            
               The examiner concludes that (answer, page 6):                          
               [W]ith the known and existing mail sorting                             
               equipment having the built-in bar code reading                         
               capabilities for switching to a manually-                              
               written code reading mode and in view of the                           
               teachings of the applied prior art references,                         
               to merely provide a mail piece with a bar code                         
               that would make use the built-in capabilities                          
               of the known mail sorting equipment would have                         
               been most obvious to those having ordinary                             
               skill in the art.                                                      
          We disagree with this conclusion, because we find no disclosure             
          in either Gunn or Pusic of any mail sorting equipment having                
          “built-in bar code reading capabilities for switching to a                  
          manually-written code reading mode.”  The Gunn apparatus, in                
          particular, has no such switching ability, but determines the zip           
          code solely by reading the manually-applied markings 18.                    
               Accordingly, we will not sustain rejection (1).                        

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