Ex parte HERRMANN et al. - Page 5




                     Appeal No. 1998-2673                                                                                                                                              
                     Application 08/557,138                                                                                                                                            


                     appeal.  Independent claim 19 was amended in the amendment                                                                                                        
                     filed April 17, 1997,  the communication to which the9                                                                                                                    
                     examiner’s final Office action is said to respond.  The                                                                                                           
                     correct version of independent claim 19 is reproduced below:                                                                                                      
                                A value-bearing document, which comprises:                                                                                                             
                                           a carrier member denominated with a value and having                                                                                        
                                a planar surface and a depressed surface, said depressed                                                                                               
                                surface including an opening formed in said carrier                                                                                                    
                                member, said planar surface including a security element;                                                                                              
                                and                                                                                                                                                    
                                           an at least partially transparent cover foil mounted                                                                                        
                                on said depressed surface and covering said opening.                                                                                                   
                                As we indicated at the outset, the sole issue before us                                                                                                
                     is whether claims 19, 21, 30 and 31 are properly rejected                                                                                                         
                     under 35 U.S.C. § 103(a) as unpatentable over Lee in view of                                                                                                      
                     Kaule.  After a review of the record as a whole, we are in                                                                                                        
                     agreement with appellants that the examiner has not made out a                                                                                                    
                     prima facie case of obviousness.  Accordingly, we are                                                                                                             
                     constrained to reverse.                                                                                                                                           
                                The value-bearing document of claim 19 requires a carrier                                                                                              
                     member having a planar surface and a depressed surface, with                                                                                                      



                                9 Paper No. 5.                                                                                                                                         
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