Ex parte MITSUHASHI et al. - Page 10




            Appeal No. 97-2582                                                                          
            Application 08/484,353                                                                      

            Importers Int’l., Inc., 73 F.3d 1085, 1087, 37 USPQ2d 1237,                                 
            1239 (Fed. Cir. 1995), cert. denied, 117 S.Ct. 80 (1996).                                   
                  For the foregoing reasons, the rejection of claims 7 and                              
            15-18 under 35 U.S.C. § 103 as being unpatentable over                                      
            Kinoshita and Taguchi cannot be sustained.                                                  
                  Claims 8-10 were rejected under 35 U.S.C. § 103 as being                              
            unpatentable over Kinoshita, Taguchi, and Ogawa.  Claim 8                                   
            depends from claim 7 and further recites that the recording is                              
            repeated in response to the first switching operation to                                    
            thereby continuously record successively image data in the                                  
            memory means.  Claim 9 depends from claim 8 and claim 10                                    
            depends from claim 9.  With regard to claim 8, the appellants                               
            argue (Br. at 8):                                                                           
                  While Ogawa discloses a camera that is capable of                                     
                  continuous recordation or reproduction, the Ogawa                                     
                  device must be switched into a recordation mode to                                    
                  accomplish the continuous recordation, and switched                                   
                  into a reproduction mode to accomplish the                                            
                  continuous reproduction.                                                              
                  The feature added by claim 8, however, does not preclude                              
            switching first between a recordation mode and a reproduction                               
            mode.  It appears that for claims 8-10 the appellants continue                              
            to rely on the feature of putting both recording and                                        
            reproduction controls on the same push-button for patentable                                
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