Ex Parte Voit - Page 4




              Appeal No. 2004-0269                                                                 Page 4                
              Application No. 09/589,866                                                                                 


              over or relative to the chips 17 for reading the chips and displaying information for each                 
              associated page on its digital display.  Luciano discloses that the “reader 11 is provided                 
              with a conventional key chain attachment 22 for storage securement to the book or                          
              elsewhere for storage” (column 2, lines 44-46).                                                            
                     According to the examiner (final rejection, pages 2-3),                                             
                            [a]lthough Luciano did not show a key actually attach[ed] to                                 
                            the key chain, it is inherent that a key chain typically includes                            
                            a key.  Therefore, it would have been obvious to one of                                      
                            ordinary skill in the art to modify the educational device of                                
                            Peckham with teaching of providing an educational device                                     
                            attached to a key chain or ring as taught by Luciano for the                                 
                            purpose of allowing the user to conveniently carry the device                                
                            around.                                                                                      

                     At the outset, we do not share the examiner’s view (answer, pages 3-4) that                         
              Luciano’s use of the terminology “a conventional key chain attachment 22" clearly                          
              indicates a desire for the reader 11 to be attached with keys.  Luciano makes it clear in                  
              column 2, lines 44-46, that the purpose of the key chain attachment 22 is for                              
              securement to the book or elsewhere for storage.  The terminology “conventional key                        
              chain attachment” is merely intended to describe the structure of the attachment device                    
              in terms with which one skilled in the art reading the patent would be expected to be                      
              familiar.  Luciano in no way teaches or suggests attachment of a key to the key chain                      
              attachment attached to the reader 11.                                                                      
                     In any event, even assuming Luciano were interpreted as teaching or suggesting                      
              attachment of a key to the key chain attachment 22, it is not apparent to us how the                       






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