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
-15-
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