Ex Parte Graushar et al - Page 6

                Appeal 2006-3001                                                                                  
                Application 10/747,840                                                                            

                teaches writing to a CD on the binding line, and thus, whether the Examiner                       
                erred in rejecting claims 1 through 3, 6, 7, 21, and 22 under 35 U.S.C. § 103                     
                over Pace in view of Hill I.                                                                      
                       Pace discloses (abstract) inserting a compact disk into a folder with                      
                the folder positioned for binding the folder into a magazine.  Pace does not                      
                disclose writing electronic information to or reading electronic information                      
                from the disk on the binding line, as admitted by the Examiner (Answer 3).                        
                Hill I discloses (col. 4, ll. 45-68) a method of producing verified, embossed,                    
                and encoded credit cards mounted to matched carrier forms.  The method                            
                includes the steps of embossing the face of a credit card, magnetically                           
                encoding similar information on a magnetic strip on the back of the card,                         
                and inserting the card into a verifiably matched and correctly printed carrier                    
                form.  We find nothing in Hill I that would suggest writing electronic                            
                information to or reading electronic information from a CD on a binding                           
                line.  As neither reference teaches or suggests writing electronic information                    
                to or reading electronic information from the CD on the binding line, the                         
                Examiner failed to establish a prima facie case of obviousness.                                   
                       The Examiner (Answer 3) adds Harris to the combination of Pace and                         
                Hill I in rejecting claims 4, 8, and 9 under 35 U.S.C. § 103.  Appellants                         
                contend (Br. 14) that Harris fails to teach or suggest printing personalized                      
                indicia on the printed product after associating the optical disk with the                        
                printed product.  Accordingly, the fourth issue is whether Harris teaches or                      
                suggests printing personalized indicia on the printed product after                               
                associating the optical disk with the printed product, and, thus, whether the                     
                Examiner erred in rejecting claims 4, 8, and 9 over Pace in view of Hill I and                    
                Harris.                                                                                           

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