Appeal No. 2004-0348
Application No. 09/901,220
prima facie obviousness for one of ordinary skill in the art to
eliminate a feature of the prior art along with its advantage.
Concerning separately rejected claims 55 and 56 which call
for printing identification information received from a computer
database on the document container stock for storing medical-
related records, we are in complete agreement with the examiner
that such a printing of information on a file folder was
notoriously well-known in the art at the time of filing the
present application and, accordingly, such printing would have
been obvious to one of ordinary skill in the art.
The rejection of claim 65 is another matter. Claim 65
specifically requires "folding and gluing the seam to capture the
radio frequency identification tag within the glued portion of
the seam." While the examiner focuses upon the claimed step of
depositing the tag "in proximity to a seam," and argues that "the
tag could be located next to the seam not exactly on the seam as
been argued,"3 claim 65 nevertheless requires that the folding
and gluing steps result in the tag being captured within the
glued portion of the seam.
3 Page 4 of Answer, last sentence.
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