Appeal No. 1998-0147
Application 08/446,278
72, and the amplifier (not shown), whereas the independent
claims recite that the memory card has a built-in
semiconductor memory and a built-in playback circuit
including a digital-to-analog converter, a filter circuit
and an audio amplifier. These "built-in" limitations were
added by the amendment (Paper No. 21) filed March 27, 1996.
The Examiner erred in not addressing these new limitations
in the Final Rejection (Paper No. 22), although perhaps this
was because of Appellant's incorrect statement in the
remarks that "claims 1-32 and 46-49 . . . are sufficiently
broad to encompass both the [integral memory] embodiment of
Fig. 8 and the [separable memory] embodiment of Fig. 10"
(Paper No. 21, p. 9). Appellants argue at length that
Kramer discloses a memory separate from the replay unit
(Br5-10). In the Examiner's Answer, the Examiner concludes
for the first time that "it would have been obvious to a
person of ordinary skill in the art to build the memory card
and the playback system of Kramer in one unit in order to
save space and make it cheaper" (EA4). Appellants respond
that a reference itself must suggest modifications to
properly support a § 103 rejection and that Kramer is
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