Ex parte LEE et al. - Page 6




          Appeal No. 1998-0866                                                        
          Application No. 08/698,707                                                  


               We find that modification of the Swanson device to                     
          provide an internal recording device as suggested by Brock or               
          Goto teaches away from the objective disclosed in Swanson and               
          would not have been an obvious modification at the time the                 
          invention was made to a person having ordinary skill in the                 
          art.                                                                        
               Accordingly, the decision of the examiner to reject claim              
          1 under 35 U.S.C. § 103 is reversed.                                        
                              NEW GROUNDS OF REJECTION                                
               Under the authority of 37 CFR § 1.196(b), this panel of                
          the board introduces the following new grounds of rejection as              
          to claims 1, 4 and 5.                                                       
               Claims 1, 4 and 5 are rejected under 35 U.S.C. § 103 as                
          being unpatentable over Brock in view of Swanson.                           
               We note that both Brock and Swanson teach recording                    
          magnetic information on a magnetic track on film in a camera.               
          Each discuss the various types of information that may be                   
          recorded, e.g. the name of the owner of the camera, the date                
          and/or location of the picture being taken, the camera                      
          settings (Swanson, col. 1, lines 11-37, and Brock, col. 1,                  
          lines 37-50) and the type of recording device suitable to                   
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