Appeal No. 1998-1655 Page 25
Application No. 08/367,766
l. 53. To reject the limitations of claim 23, however, the
examiner relies on a different embodiment/example from Yamada,
viz., "Embodiment 6 in FIG. 15 ...." Col. 5, ll. 65-66.
Figure 15 of the reference does depict contacting the top
surface of the shell 1 of the disk cartridge with a planar,
inner wall surface of the frame 7. The examiner fails to
identify any suggestion, however, to combine the showing of
Figure 15 with the teaching of Figure 26. Because the
examiner omits a line of reasoning that explains why such a
combination would have been desirable, we are not persuaded
that the prior art would have suggested combining the
teachings of Figures 15 and 26. Therefore, we reverse the
rejection of claim 23 as obvious over Yamada. We next, and
last, address claims 24 and 25.
Claims 24 and 25
The appellants argue, "there is no teaching in the prior
art applicable to optical disc technology ...." (Appeal Br.
at 15.) The examiner responds, "[i]t would have been obvious
to one of ordinary skill in the art at the time the invention
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