Appeal No. 96-1706
Application 08/203,461
While the examiner's rationale for the obviousness
rejection is sometimes hard to follow, it is clear that the
examiner has failed to establish a case of prima facie
obviousness because a key claimed limitation is missing from the
prior art on which the examiner relies in making the rejection.
Each of the independent claims calls for "first and second
counters..." As the examiner recognizes, at page 4 of the answer
(paragraph 9.1.8), the prior postage meters upon which the
examiner relies, "do not use the optical encoders or counters as
claimed." The examiner takes the position that the "claimed
optical encoder performs the same function as the optical encoder
of Schwartz" and "the claimed counters are used to keep track of
the correct location of the item to receive the postmark and the
data to be printed so that the postmark is correctly placed at
the specified location [sic] this is one of the functions of
processor 113 of Schwartz."
Even if the functions to which the examiner refers were
the same, and we do not accept this premise, the fact that the
first and second counters are part of specifically claimed
structure for achieving appellants' intended result and that the
examiner has not shown such structure to be disclosed or
suggested in any way by the prior art constitutes a firm basis
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Last modified: November 3, 2007