Ex parte HAMAMOTO et al. - Page 17




          Appeal No. 1998-0147                                                        
          Application 08/446,278                                                      

               Claims 6 and 7 are rejected under 35 U.S.C. § 112,                     
          second paragraph, for failing to particularly point out and                 
          distinctly claim the subject matter which the Applicants                    
          regards as their invention.  There is no antecedent basis                   
          for "the magnetic disk memory and the buffer memory"                        
          (emphasis added).  With regard to the limitation of "the                    
          storage area for said memory circuit in the memory card"                    
          (emphasis added), we assume that the memory circuit                         
          inherently has a storage area so that no express antecedent                 
          basis is required for "storage area."                                       


                                    CONCLUSION                                        
               The rejection of claims 48 and 49 under 35 U.S.C. § 103                
          over Kramer is sustained.  The rejection of claims 1-32                     
          and 46, 47, and 50-52 under § 103 over Kramer is reversed.                  
               The rejection of claims 1-32 and 46-52 over Kondo is                   
          reversed.                                                                   
               A new ground of rejection has been made as to claims 6                 
          and 7 pursuant to 37 CFR § 1.196(b).                                        
               This decision contains a new ground of rejection                       
          pursuant to 37 CFR § 1.196(b)(amended effective Dec. 1,                     

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