Ex parte HAMAMOTO et al. - Page 7




          Appeal No. 1998-0147                                                        
          Application 08/446,278                                                      

          selected one of a password and a password coincidence                       
          detection signal and replacing the digital signal with                      
          another bit so as to prevent a user from reproducing a                      
          correct digital signal."                                                    
               Kramer                                                                 
               The Examiner does not specifically address claim 17.                   
          The closest statement we find to addressing this limitation                 
          is the following (Paper No. 18, p. 4; EA5):  "As to claims                  
          13, 14, 18-20, Kramer's system also has control over the                    
          security conditions/counts of copying of the digital data."                 
          Appellants argue that the Examiner has given no indication                  
          where claim 17's security means can be found in Kramer                      
          (Br14).                                                                     
               Kramer discloses that the controller can be programmed                 
          to keep a count of the number of times that digital data is                 
          reproduced and to prevent further reproductions above a                     
          specified maximum number of times to prevent unlicensed                     
          copying (col. 5, lines 15-22).  While this might be                         
          considered a "security feature," it does not come close to                  
          meeting the functions recited in claim 17.  Accordingly, the                
          Examiner has failed to establish a prima facie case of                      

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