Ex parte PROVOST - Page 11




          Appeal No. 1998-0889                                                        
          Application 08/006,585                                                      

          ordinary skill in the art that there must be some structure for             
          holding down the material to be printed on in a printing position in        
          the plotter of Otsuka to keep the material from moving around.  No          
          means-plus-function interpretation has been advanced as to the "means       
          for holding," so any structure satisfies this function.  Thus, we           
          generally agree with the Examiner's finding that "it was known in the       
          art that . . . means for holding the plastic card is a crucial              
          component to prevent movement of the plastic card while information         
          is being printed" (EA4), although we would use the term "substrate"         
          instead of the more specific "plastic card."  Lastly, although we           
          agree with the Examiner's finding that "it was known in the art that        
          the use of smudge resistant [ink] is [sic, was] widely use[d] to            
          prevent smudging when writing information on a substrate" (EA4), the        
          reason why one of ordinary of ordinary skill in the art would have          
          been motivated to use "smudge resistant ink" is because smudge              
          resistance is a desirable property for ink on cards that will be            
          handled frequently.  Thus, properly argued, the Examiner did not            
          really need to resort to Official Notice.                                   
               This analysis does not address all of the claim limitations.           
          With respect to claim 1, the rejection does not address the                 
          limitations that "the customized pre-manufactured card have a unique        

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