Ex parte BORG - Page 9




          Appeal No. 1997-2774                                                        
          Application No. 08/080,471                                                  


          35 U.S.C. § 112, sixth paragraph, to that disclosed for the                 
          capturing means.                                                            
               Furthermore, regarding the memory, appellant argues                    
          (Brief, page 37) that Tanaka neither discloses a memory nor                 
          requires a memory, since the digitized television signal is                 
          immediately transmitted to another location.  The examiner, on              
          the other hand, contends (Answer, page 11) that memory devices              
          are well-known in the art for temporarily storing information               
          to be processed and "would normally be an inherent feature."                
          Although the examiner's rationale for including a memory is                 
          reasonable, it appears to be based on mere conjecture, as the               
          inclusion of a memory is not suggested by the reference.  In                
          re Warner, 154 USPQ 173, 177 (CCPA 1967).  Accordingly, the                 
          examiner has failed to establish a prima facie case of                      
          obviousness, and we cannot sustain the rejection of claim 6.                
               Claims 9, 43, and 44 each recite a means for or step of                
          converting a portion of the image viewed by the television                  
          camera into a sequence of integers, with "the remaining                     
          portions of the analog electrical signal not being used."                   
          Appellant (Brief, pages 45-6) points to A/D converter 25,                   
          microprocessor 15, sync separator 29, gate 31, D flip-flop 35,              
                                          9                                           





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