Ex parte GALLAGHER et al. - Page 4

          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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