Ex parte HIRATA et al. - Page 5




          Appeal No. 1998-1470                                                        
          Application 08/533,740                                                      

          totally rigid and, therefore, would perform some amount of                  
          shock damping, it is not necessary to consider whether                      
          Hoogeveen would have satisfied the function of damping shocks               
          if the function had been recited.  We conclude that the                     
          Examiner has established a prima facie case of obviousness.                 
          The rejection of claims 1-4 and 7-9 is sustained.                           

          Claims 6 and 11                                                             
               The Examiner stated (Paper No. 4, pages 5-6; FR4):                     
                    Hoogeveen et al does not show the space being filled              
               with a resin.  However, filling spaces in optical disks                
               with resin is old and well known throughout the art.                   
                    It would have been obvious to one of ordinary skill               
               in the art at the time the invention was made to provide               
               the disc of Hoogeveen et al with the space between the                 
               outside of the substrate and the inside of the rim being               
               filled with a resin.  One of ordinary skill in the art                 
               would have been motivated to provide a more durable and                
               stable disc while utilizing a known lightweight optical                
               disc material.                                                         
               Appellant argues even assuming the Examiner's contention               
          that filling spaces in optical disks with resin was well known              
          is correct, "there is no teaching in the reference for filling              
          the space between the protective member rim and the outer                   
          surface of the glass substrate as claimed by the applicants'                
          [sic]" (Br7).                                                               

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