Ex parte KIM - Page 8

          Appeal No. 96-3211                                                            
          Application 07/928,717                                                        
               6.   Folsom does not teach away from the combination because             
          it is Suzuki's purpose (intrusion detection) that would motivate              
          the artisan to combine the references, not Folsom's (transaction              
          monitoring) purpose.  The problem of wasting video during non-                
          alarm periods is the same in both situations, however, and                    
          provides the motivation to modify an intrusion detection system               
          with an intermittent/continuous recording mode switch.                        
               7.   Independent claim 7 contains additional limitations.                
          Moreover, Applicant specifically argues the differences between               
          his disclosed circuit and structures in the references.                       
          (Paper 33 at 14.)  The examiner relies on the general skill in                
          the art (Paper 34 at 15), but fails to explain precisely what                 
          would have led the artisan to Applicant's circuits or their                   
          equivalents.  Thus, we conclude that the examiner has failed to               
          provide a basis for rejecting claim 7.                                        
               8.   We reverse the rejection of claim 8 pro forma because               
          claim 8 depends from claim 7.                                                 
               9.   Regarding claim 10, Applicant points out the difference             
          signal limitation and the two recording modes without any                     
          argument as to why these limitations are not met.   (Paper 333                          

               3    In his reply brief, Applicant argues that claim 10                  
          recites specific circuitry like claim 7.  (Paper 37 at 11.)  This             
          argument finds no support in the language of claim 10.  Moreover,             
          unlike the other claims on appeal, claim 10 does not use                      
          means/step-plus-function language, so it is not presumed to                   
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