Appeal No. 97-4096
Application 08/566,008
the inside of flap 29. We are further of the view that the
examiner has correctly construed the claim limitation of “data
encoded element” to be, for example, a semi-conductor chip or
a magnetic strip containing machine-readable data as such is
defined on page 2 of appellant’s specification. This,
however, is the limit of our agreement with respect to the
examiner. We are in agreement with the appellant that there
is no teaching, incentive, or suggestion for modifying the
device of Hoyt to include a data encoded element. It is
incumbent upon the examiner to provide a rational basis for
the examiner’s statement that it would have been obvious to
utilize such a data encoded strip on the device of Hoyt. No
readily apparent reason or purpose for such a device on the
score card carrier of Hoyt comes to mind. In this instance,
it is clear that the only incentive for placing the magnetic
strip on the score card holder of Hoyt would have been to
satisfy the claimed subject matter. Of course, a sustainable
rejection cannot be based on such an example of impermissible
hindsight.
REVERSED
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