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 7Page: Previous 1 2 3 4 5 6 7 8 Next
Last modified: September 9, 2013