Ex parte FUJINAMI et al. - Page 12




          Appeal No. 96-0809                                                          
          Application 08/197,677                                                      


          other words, the examiner cannot simply assert that the                     
          content of the information is entitled to no patentable                     
          weight.  The examiner must address the information content                  
          recited in a claim in the same manner as any other limitation               
          of a claim is considered for prior art purposes.  Since the                 
          examiner has not considered the information content for                     




          the rejection under section 102 and has not demonstrated                    
          evidence of obviousness as required under section 103, we do                
          not sustain this rejection of claims 1-5 and 15.                            
                        4. The rejection of claims 2, 5/2, 9                         
                         and 12 under 35 U.S.C. § 103 as                              
                         unpatentable over Ando in view of                            
                         Maruta.                                                      
                                                                                     
          These are dependent claims which recite that recording                      
          information includes video information and audio information.               
          The examiner cites Maruta as teaching that it was well-known                
          in the art to multiplex video and audio data on optical discs               
          [answer, pages 4-5 and 8-9].  Since Maruta does not overcome                
          the deficiencies of Ando noted above, and since these claims                
          all depend from and incorporate the limitations of claims 1, 6              

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