Appeal 2006-3001
Application 10/747,840
Harris discloses (col. 7, ll. 58-59) feeding pre-printed signatures 16 to
chain 12. After the magazine is assembled, it is stapled (see col. 8, ll. 21-
24). Harris discloses (col. 7, ll. 24-28) that the assembled magazine is
transferred to the printer 40 for receiving the name and address on the label
on the cover. Thus, Harris discloses printing personalized indicia on the
printed product after all personalized signatures are associated with the
magazine. However, Harris makes no mention of optical disks as the pre-
printed signatures. Thus, Harris fails to teach or suggest writing to or
reading from an optical disk on the binding line, as required by the claims
from which 4, 8, and 9 depend. Consequently, the combination of Pace, Hill
I, and Harris fails to establish a prima facie case of obviousness for claims 4,
8, and 9.
The Examiner (Answer 4) rejects claim 12 under 35 U.S.C. § 103
over Hill II in view of Harris. The Examiner asserts (Answer 4) that "Hill
discloses all the limitations of the claims [sic], but it doesn't disclose printing
personalized indicia in response to what was read from the optical disk after
associating." The Examiner uses Harris to remedy the alleged deficiency.
Appellants contend (Br. 17) that there is no reason to combine a system that
matches a credit card with a carrier and a printing system that generates
magazines. The last issue, therefore, is whether the Examiner erred in
rejecting claim 12 under 35 U.S.C. § 103 over Hill II in view of Harris.
As discussed supra, Hill II does not involve optical disks. Hill II
discloses matching a smart card with its carrier. Harris discloses printing
personalized indicia on a magazine after it is assembled with pre-printed
signatures inside. Harris makes no mention of optical disks. We find no
suggestion in either reference to read electronic information from an optical
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