Ex Parte SANSONE - Page 23




            Appeal No. 2000-0376                                                                         
            Application 08/753,236                                                                       

                  Morrison discloses marking materials containing                                        
            retroreflective fillers.  Copies or marks using such material can                            
            be readily identified, which can permit subsequent identification                            
            of the source of the image (the type of machine, the facility                                
            where the copy was made, or the specific machine unit) (col. 43,                             
            lines 15-25, referred to by the Examiner).  Different materials                              
            allow distinguishing between different kinds of marks (col. 43,                              
            lines 36-42, referred to by the Examiner).  Other uses of the                                
            reflective material are described at column 2, lines 32-65.                                  
                  Mizutani discloses discriminating a kind of paper by                                   
            performing one or more operations (col. 3, lines 52-63, referred                             
            to by the Examiner).  The sensed type of paper permits selection                             
            of the appropriate color conversion table (abstract).                                        
                  Neither Morrison nor Mizutani suggests recording information                           
            about the type of ink or the type of paper in the indicia; the                               
            only teaching for these limitations is in Appellant's disclosure.                            
            We disagree with the Examiner's reasoning that it would have been                            
            obvious to record any kind of information for reasons of security                            
            and to prevent counterfeiting.  Accordingly, the Examiner has                                
            failed to establish a prima facie case of obviousness.  The                                  
            rejection of claims 10, 11, and 39 is reversed.                                              





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