Ex parte TEPPEI YOKOTA - Page 4




          Appeal No. 96-4202                                                          
          Application 08/033,181                                                      

          of appellant and the examiner, we reverse both rejections under             
          35 U.S.C. 103 because it is our view that the examiner has failed           
          to establish a case of prima facie obviousness.                             
                    Both independent claims 1 and 7 require, inter alia,              
          that there be recorded on the lead-in section of the disc                   
          recording state information regarding each set of data wherein              
          the recording state information includes reproduction information           
          indicating whether to inhibit reproduction of any recorded                  
          encoded set of data.  The claims further require that a                     
          controller selectively mask unnecessary recorded encoded sets of            
          data "by changing the reproduction information to indicate                  
          inhibition of reproduction of such set of recorded encoded data             
          while retaining the information indicating the order of                     
          recording" and that the controller selectively cancel the mask              
          "by changing the reproduction information to indicate non-                  
          inhibition of reproduction of such set of recorded encoded data             
          while retaining the information indicating the order of                     
          recording."                                                                 
                    While the examiner contends that a controller means, as           
          claimed, is taught or suggested by elements 25-28 of Takahashi              
          '765 or by element 37 of Sako as modified by Takahashi '116, our            



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