Ex parte PROVOST - Page 16




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

          on a card.  We do not rely on Appellant's statement that the printing       
          device may take a variety of forms because it does not appear to be         
          an admission as to prior art in the card printing art.  The rejection       
          of claim 5 is sustained.                                                    
               With respect to claims 9-11, neither Hakamatsuka nor Otsuka            
          disclose printing on a card having "pre-embossed alphanumeric               
          characters."  While we agree with the Examiner that embossing on            
          cards is well known, this does not address the claimed invention of         
          printing on a card that contains embossed characters.  Thus, the            
          Examiner has failed to make a prima facie case with respect to claims       
          9-11.  The rejection of claims 9-11 is reversed.                            
               Claim 16, 17, and 18 are directed to the prepared writing              
          surface.  As to claim 17, the Examiner finds that Hakamatsuka teaches       
          a writing surface comprising paper at column 10, lines 37-38.               
          Appellant argues that this disclosure relates to material used in           
          sublimation printing, not paper to be used for a prepared writing           
          surface (Br25).  The paper base material 22a does not receive the           
          actual printing and, so, is not a prepared writing surface.  Thus,          
          the rejection of claim 17 is reversed.                                      
               As to claims 16 and 18, the Examiner applies Cannistra, which          
          the Examiner finds to disclose a writing surface comprising foil            

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