Ex parte NAKAMARU et al. - Page 15

          Appeal No. 96-0209                                                          
          Application 07/922,501                                                      

          European '073 reference does not anticipate any one of                      
          independent claims 1, 4, 6 and 8.  Therefore, the examiner has              
          made erroneous findings on the scope and content of the prior art           
          and also on the differences between the claimed invention and the           
          prior art.  We note further that Yoshio does not make up for the            
          deficiencies of the European '073 reference insofar as the                  
          features of the independent claims are concerned.  Thus, the                
          conclusion of obviousness of dependent claims 3, 5, 7 and 9,                
          based on the examiner's rationale, cannot be sustained.                     
                               New Ground of Rejection                                
               Pursuant to 37 CFR  1.196(b), claims 4-11 and 13-15 are               
          herein rejected under 35 U.S.C.  112, second paragraph, as                 
          failing to particularly point out and distinctly claim that                 
          subject matter which the appellants regard as their invention.              
               Each of the independent claims contains means-plus-function            
          limitations as authorized under 35 U.S.C.  112, sixth paragraph.           
          For such claim features, the appellants are correct that the                
          examiner may not disregard the structure disclosed in the                   
          specification corresponding to the claim language (Br. at 18).              
               On page 24 of the specification, the following definition of           
          various "means" is provided:                                                
                    The information read system 200 and the pre-                      
               amplification part 2 and audio data decode circuit 24                  


Page:  Previous  8  9  10  11  12  13  14  15  16  17  18  19  20  21  22  Next 

Last modified: November 3, 2007