Ex parte MASAKI et al. - Page 12




          Appeal No. 1998-0146                                                        
          Application 08/407,058                                                      

          "simultaneously moving the objective lens toward and away                   
          from the cleaning disk and reciprocating said optical head                  
          toward the inner and outer peripheries of the disk"                         
          (emphasis added), as defined in claim 1 (Br14).  It is                      
          argued that, "[a]t best, [the] combination only suggests                    
          moving the lens toward the cleaning disk a single time prior                
          to radially reciprocating the lens, and then moving the lens                
          away from the cleaning disk after the radial reciprocation                  
          is completed" (Br15).                                                       
               We disagree with Appellants' argument.  Sugano clearly                 
          teaches moving the objective lens up and down while the                     
          cleaning disk is rotating and would operate in the same way                 
          if combined with Yamamoto.  The teachings of Sugano would                   
          have to be modified to operate in the way suggested by                      
          Appellants, whereas the combination proposed by the Examiner                
          combines two independent cleaning operations.                               
               Appellants argue that Yamamoto already includes a means                
          for making contact between the lens and brush, so Yamamoto                  
          does not disclose or suggest a benefit for a non-disclosed                  
          up-and-down operation and cannot provide the motivation for                 
          simultaneous axial and radial movement of the lens (Br15;                   

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