Ex parte YU - Page 9




          Appeal No. 1998-2542                                                        
          Application No. 08/266,306                                                  


               The mere fact that the prior art may be modified in the                
          manner suggested by the examiner does not make the                          
          modification obvious unless the prior art suggested the                     
          desirability of the modification.  In re Fritch, 972 F.2d                   
          1260, 1266 n.14, 23 USPQ2d 1780, 1783-84 n.14 (Fed. Cir.                    
          1992); In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127                 
          (Fed. Cir. 1984).  We can find no suggestion in any of the                  
          applied prior art for connecting a camcorder to an external                 
          broadcast receiver as recited in independent claims 1, 6 and                
          14.  Therefore, we do not sustain the examiner’s rejection of               
          claims 1, 6 and 14 or of claims 2-5, 7-13, 15-19 and 21-23                  
          which depend therefrom.                                                     
          With respect to claim 20, the examiner additionally                         
          applies the teachings of Levine to teach the conventionality                
          of infrared signal control.  Since Levine does not overcome                 
          the basic deficiencies of the combination of the admitted                   
          prior art and Beyers as discussed above, we also do not                     
          sustain the examiner’s rejection of claim 20 based on the                   
          admitted prior art, Beyers and Levine.                                      




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