Ex Parte KUBO - Page 3




          Appeal No. 2004-0316                                                        
          Application 09/136,619                                                      


          claims on appeal.  Appellant groups all independent claims 1, 10,           
          16, and 22 together with independent claim 1 as representative              
          thereof.  Appellant also presents dependent claims 25-28 as                 
          falling together in a separate grouping.  Note the top of page 4            
          of the brief.                                                               
               At page 4 of the brief, appellant urges that Wen fails to              
          disclose markings which specify images that correspond to the               
          print images, where the markings are displayed in printing                  
          together with the print images on the CD.  The ensuing discussion           
          recognizes that column 1, lines 48-61 of Wen teaches the                    
          thumbnail images recited in the body of independent claim 1 on              
          appeal which is stated there to form the so-called index print of           
          the preamble of that claim.  Page 5 of the brief urges that the             
          only text contemplated by Wen regards the descriptive contents of           
          the CD and that there is no teaching or suggestion of specific              
          information that would map out the location of thumbnail images             
          on a CD.  Finally, appellant recognizes in the paragraph bridging           
          pages 5 and 6 of the brief that Wen mentions the desire to print            
          thumbnail images "as" an index on a CD surface.  This is correct            
          in that column 1, lines 50 and 51 indicate that "thumbnail images           
          can be printed on the label as an index of the images stored in             


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