Appeal 2006-3001
Application 10/747,840
2005) and Reply Brief (filed May 5, 2006) for Appellants'
counterarguments.
SUMMARY OF DECISION
As a consequence of our review, we will reverse the anticipation and
obviousness rejections of claims 1 through 4, 6 through 9, 11 through 14, 21,
and 22.
OPINION
The Examiner (Answer 3) asserts that claims 1, 3, 6, 21, and 22 are
anticipated by Hill I. Appellants contend (Br. 7) that Hill I fails to teach or
suggest writing electronic information to an optical disk on a binding line.
The first issue is whether Hill I discloses writing electronic information to an
optical disk on a binding line, and, thus, whether the Examiner erred in
rejecting claims 1, 3, 6, 21, and 22 under 35 U.S.C. § 102(b) over Hill I.
The Examiner asserts (Answer 3) that Hill's card 30 is an optical disk
and that embosser section 20 is a binding line. In response to Appellants'
argument (Br. 7) that "optical disk" is defined in the specification as a
storage device such as a CD or DVD, the Examiner explains (Answer 5) that
defining the term "optical disk" as a CD or DVD would render the
claims indefinite. The examiner notes that claim 2, which depends
from claim 1, states, "the optical disk includes at least one of a CD,
CD-ROM, and DVD." Since claim 2 limits the term “optical disk” to
a CD, CD-ROM, and DVD, the term "optical disk" in claim 1 must be
broader and encompass other storage mediums. Moreover, the
appellant has not disclosed any characteristics about CDs or DVDs
that distinguish them from any other storage device. Therefore, any
storage device, including cards with magnetic strips, read [sic] on the
term "optical disk" as recited in claims 1 and 6.
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