Ex Parte OKAMOTO - Page 6



          Appeal No. 1998-0996                                                        
          Application No. 08/498,385                                                  

          cure the deficiencies of Inaba discussed supra, and we cannot               
          sustain the obviousness rejection of claims 3 through 5, 9, 14              
          through 17 and 22 through 25.                                               
               Claim 10 depends from claim 9 and further recites specific             
          materials for the ultraviolet ray shading material.  The examiner           
          (Answer, pages 8-9) cites Kirk-Othmer's section on UV stabilizers           
          asserting that it would have been obvious "to provide the disc              
          cartridge holder of Inaba '642 with an ultraviolet shading                  
          material being selected from the . . . [claimed] compounds as               
          shown by 'Ultraviolet Absorbers' in order to avoided [sic] the              
          degradation of a polymer compound of which the absorber is a                
          part."                                                                      
               Although Kirk-Othmer does teach that sunlight and other                
          sources of ultraviolet light degrade polymers and light sensitive           
          materials, the examiner has not established that the disc holders           
          of Inaba (which are made of synthetic resin) are exposed to such            
          radiation and would, therefore, require protection from such                
          radiation.  Furthermore, the examiner has failed to explain why             
          the skilled artisan would have selected the particular compounds            
          claimed.  Merely that Kirk-Othmer discloses that such materials             
          may be used for ultraviolet filtering is insufficient motivation            

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