Ex Parte SIWINSKI et al - Page 11




          Appeal No. 2003-0256                                                        
          Application No. 09/334,375                                                  

          normally are provided with either a precut sheet supply or a roll           
          stock supply and a stock cutter for cutting sheets to size from             
          the roll stock (col. 1, lines 6-25).                                        


               The examiner argues (answer, pages 6-7):                               
                    It would have been obvious to a person of ordinary                
               skill in the art to use a series of discrete receiver                  
               sheets with a transponder coupled to one of the sheets                 
               as taught by Mallory in place of the print roll used by                
               Purcell et al.                                                         
                    The motivation for doing so would have been in                    
               order to eliminate the need for a stock cutter and                     
               lower the cost of the printer of Purcell et al. as                     
               taught by column 1, lines 14-16 of Mallory.                            
          Mallory, however, does not disclose a transponder coupled to a              
          sheet.  Mallory merely discloses precut sheets (col. 1, line 8),            
          and Purcell’s disclosed transponder is embedded in an insert                
          attached to an end of a media roll holder (col. 2, lines 11-14;             
          col. 9, lines 11-12).  Thus, the applied prior art does not                 
          disclose a transponder coupled to a sheet, and the examiner has             
          not explained how the applied prior art itself would have fairly            
          suggested the use of a transponder coupled to a sheet to one of             
          ordinary skill in the art.  The record, therefore, indicates that           
          the motivation relied upon by the examiner for using, in place of           
          Purcell’s media roll and transponder on the roll holder, a stack            
          of sheets with a transponder being coupled to a sheet, comes from           

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