Ex parte MASAKI et al. - Page 19




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

          with the cleaning disk.  It is implied, but not expressly                   
          stated, that the lens in Adachi is reciprocated in the                      
          radial direction.  However, Mitani expressly discloses                      
          reciprocating the lens in a radial direction.  Thus, there                  
          is an express suggestion for the proposed modification                      
          without the Examiner's reasons.                                             
               Appellants argue that "[n]one of the cited references,                 
          including Mitani, disclose or suggest a reason for including                
          a reciprocating optical lens" (Br27).                                       
               Mitani discloses a reciprocating optical lens; it does                 
          not need to teach the reason for it.  Of course, Yamamoto                   
          expressly teaches a reason for the reciprocating optical                    
          lens, of which one of ordinary skill in the art would have                  
          been aware.                                                                 
               Appellants argue that Adachi moves the lens toward                     
          contact with the cleaning disk during the focus operation,                  
          the lens is moved in the radial direction, and the lens is                  
          presumably moved away from contact once the cleaning                        
          operation is complete (Br28).  Thus, it is argued, "Adachi                  
          lacks the repeated axial movement of the objective lens                     
          'toward and away' from the cleaning disk that is occurring                  

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