Ex parte PROVOST - Page 12




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

          card identification affixed to each card" and "data entry means for         
          entering the unique card identification."  Similar limitations are          
          found in method claim 41.  All limitations in a claim must be               
          addressed.  See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548          
          (CCPA 1970) ("every limitation positively recited in a claim must be        
          given effect in order to determine what subject matter that claim           
          defines"); In re Wilson, 424 F.2d 1382, 1385, 165 USPQ 494, 496 (CCPA       
          1970) ("All words in a claim must be considered in judging the              
          patentability of that claim against the prior art.").  Accordingly,         
          the rejection of claims 1, 41, and 42 is reversed.  The APA does not        
          cure the deficiencies with respect to claim 1; thus, the rejection of       
          claim 2 is also reversed.                                                   
               With respect to claim 23, the rejection does not address the           
          limitations of a "host data processing system" and "means for sending       
          and receiving both data and information from the host data processing       
          system."  The rejection of claim 23 is reversed.                            
               Appellant argues that Hakamatsuka does not disclose issuance of        
          pre-manufactured plastic cards during a single interview with the           
          card issuing authority (Br9-10).  We have trouble seeing how the            
          single interview/card issuance limitations provide any structural or        
          process limitations that distinguish over the references.  Although         

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