Ex parte DOODSON - Page 12




          Appeal No. 98-0003                                                          
          Application No. 08/601,896                                                  


               This rejection cannot be sustained.  Because the examiner              
          has failed to point out where in the combined teachings of the              
          references the claimed locating pins are to be found, and                   
          because it is not apparent to us where the applied references               
          teach or suggest the claimed locating pins, appellant’s                     
          general argument that claim 15 is patentable over the combined              
          teachings of Ouwerkerk, Karakane and Einhaus is well taken.                 

                     New rejection pursuant to 37 CFR § 1.196(b)                      
               Pursuant to our authority under 37 CFR § 1.196(b), we                  
          enter the following new rejection:                                          


               Claims 16 and 17 are rejected under 35 U.S.C. § 112,                   
          second paragraph, as being indefinite.                                      
               Claims 16 and 17 read as follows:                                      

               16. A support for a disc-shaped recording medium for                   
                    use with a holder in a combination as claimed in                  
                    claim 1.                                                          
               17. A holder for use in a combination with a support                   
                    as claimed in claim 1.                                            
               A first possible interpretation of claim 16 is that it is              
          directed to a support per se that is capable of being used                  

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