Ex parte PROVOST - Page 13




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

          the system in Hakamatsuka appears intended to be a central system,          
          there is no structural or process reason why it cannot be used to           
          issue cards during an interview, where the interview in Hakamatsuka         
          is the time during which the personal information and photograph is         
          gathered.  Nor is there any structural or process reason why Otsuka         
          cannot be used to issue cards during an interview.  The fact that           
          using the systems in Hakamatsuka or Otsuka would possibly be more           
          complex and expensive than Appellant's system, and therefore not            
          practical for a small card-issuing operation, is not a technical            
          reason indicating nonobviousness.  See Orthopedic Equipment Co., Inc.       
          v. United States, 702 F.2d 1005, 1013, 217 USPQ 193, 200 (Fed. Cir.         
          1983) ("the fact that the two disclosed apparatus would not be              
          combined by businessmen for economic reasons is not the same as             
          saying that it could not be done because skilled persons in the art         
          felt that there was some technological incompatibility that prevented       
          their combination.  Only the latter fact is telling on the issue of         
          nonobviousness."); In re Farrenkopf, 713 F.2d 714, 718, 219 USPQ 1, 4       
          (Fed. Cir. 1983).                                                           
               Claims 3 and 8 are similar to each other.  The limitations of a        
          "cardholder," "smudge resistant" ink, "means for delivering the ink,"       
          and card issuance during a client interview have been addressed             

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