Ex Parte Graushar et al - Page 2

                Appeal 2006-3001                                                                                  
                Application 10/747,840                                                                            

                       Appellants' invention relates to a method of producing magazines or                        
                other print media which include personalized optical disks.  Claim 1 is                           
                illustrative of the claimed invention, and it reads as follows:                                   
                1.     A method comprising:                                                                       
                       writing electronic information to an optical disk on a binding line; and                   
                       associating the written optical disk with a printed product on the                         
                       binding line.                                                                              
                       The prior art references of record relied upon by the Examiner in                          
                rejecting the appealed claims are:                                                                
                Harris, Jr.              US 5,114,128              May 19, 1992                                   
                Hill (Hill I)            US 5,388,815              Feb. 14, 1995                                  
                Pace                     US 6,126,201              Oct. 03, 2000                                  
                Hill (Hill II)           US 6,431,453 B1           Aug. 13, 2002                                  
                       Claims 1, 3, 6, 21, and 22 stand rejected under 35 U.S.C. § 102(b) as                      
                being anticipated by Hill I.                                                                      
                       Claims 11, 13, 14, and 22 stand rejected under 35 U.S.C. § 102(e) as                       
                being anticipated by Hill II.                                                                     
                       Claims 1 through 3, 6, 7, 21, and 22 stand rejected under 35 U.S.C.                        
                § 103(a) as being unpatentable over Pace in view of Hill I.                                       
                       Claims 4, 8, and 9 stand rejected under 35 U.S.C. § 103(a) as being                        
                unpatentable over Pace in view of Hill I and Harris, Jr.                                          
                       Claim 12 stands rejected under 35 U.S.C. § 103(a) as being                                 
                unpatentable over Hill II in view of Harris, Jr.                                                  
                       We refer to the Examiner's Answer (mailed March 10, 2006) for the                          
                Examiner's complete reasoning and to Appellants' Brief (filed December 23,                        


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