Ex parte KAJIYAMA et al. - Page 6




          Appeal No. 1997-2316                                                        
          Application No. 08/329,616                                                  


          (Supplemental Reply Brief, pages 2 and 3) that:                             
                    All of the claims 1-11, 14, 17 and 18 require a                   
               single tray with three concentric recesses, at least                   
               one of which is circular to accommodate a so-called                    
               “naked disc” and another of which is rectangular to                    
               accommodate a cartridge.  As in claims 12 and 15,                      
               the first recess accommodates a disc which is larger                   
               in diameter than the disc accommodated in the second                   
               recess.  The third recess is the smallest.  In                         
               claims 1-11, the third recess is rectangular.  In                      
               claims 12-18, the second recess is rectangular.                        
                    To obviate these claims the Examiner now                          
               combines two references, Suzuki ‘961 modified in                       
               view of Suzuki ‘465 to have a single tray with the                     
               claimed arrangement of three recesses for                              
               accommodating naked discs and cartridges.  However,                    
               Suzuki ‘465 specifically teaches that if discs and                     
               cartridges are to be loaded, then separate trays                       
               must be used.  See page 8, lines 6-17 of the Suzuki                    
               ‘465 English translation:                                              
                    “... [A] system directly employing discs is                       
                    readily realized in an identical                                  
                    information recording/reproducing device by                       
                    replacing the cartridge tray with a tray                          
                    provided with multiple steplike disc-shaped                       
                    slots.” [Emphasis provided].                                      
               This arguably defeats the Examiner’s rationale for                     
               the modification of Suzuki ‘961 and is exactly the                     
               opposite of what is taught and claimed by the                          
               Applicants.  Suzuki ‘961 does disclose a tray which                    
               can accommodate a naked disc or the same disc in a                     
               cartridge, however there appears to be no suggestion                   
               of a single tray accommodating any one of a                            
               combination of three different sized discs, one of                     
               them larger than the disc in a cartridge.                              
                    Suzuki ‘961 and ‘465 only disclose two recesses.                  
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