Appeal No. 2004-1302
Application No. 09/789,757
based upon any evaluation of the merits thereof and does not
preclude the examiner’s advancement of a rejection predicated
upon the applied prior art against a definite claim.
Turning to the rejection of claims 51, 55-58 and 62-64 as
being anticipated by Cheung, in rejecting these claims it appears
that the examiner is attempting to read element 2 of Cheung
(i.e., the case or overall enclosure for the media disk) on the
claimed relatively flexible insert (see page 5 of the final
rejection). For the reasons set forth by appellant in the
paragraph spanning pages 16-17 of the brief, the examiner’s
position in this regard is not well taken. Since the examiner
has not advanced sufficient reasons to establish a prima facie
case of anticipation of claims 51 and 58, as well as claims 55-57
and 62-64 that depend therefrom, the anticipation rejection of
these claims based on Cheung cannot be sustained.4
4Upon return of this application to the Technology Center,
the examiner should determine whether there is proper antecedent
basis in the specification for the term “central ledge” appearing
in claims 51 and 58 as required by 37 CFR § 1.75(d)(1), and take
whatever action is deemed appropriate in the event such
antecedent basis in the specification is found to be lacking.
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