Ex parte MAKINO - Page 6




               Appeal No. 97-0783                                                                                                      
               Application 08/396,184                                                                                                  


               Appellant points out that the claimed transfer switch sends data that has been previously entered                       

               into the remote controller by other input means.  Appellant argues that the remote controller of Koide                  

               does not have a transfer switch as recited in independent claims 7 and 10 [brief, pages 9-14].  It is                   

               further argued that there is no control means for maintaining data entered into the display as recited in               

               independent claims 7 and 10 [id., pages 14-15].  We agree with each of appellant’s arguments.                           

               The examiner has failed to consider all the language of claims 7 and 10.  The rejection only notes                      

               that Koide teaches a transfer switch for transferring a control signal to the video recorder.  Claims 7                 

               and 10, however, additionally recite “the control signal including data entered in response to operation                

               of said start switch [second user input means] [emphasis added].  Thus, it is not enough that a control                 

               signal such as “play” be sent to the video recorder.  The control signal must also include data entered in              

               response to operation of the start switch.  Koide in no way suggests transferring any data from the                     

               remote control unit to the video recorder along with a control signal.  The examiner has simply failed to               

               address this limitation of claims 7 and 10 and has failed to address appellant’s arguments directed to                  

               this language of the claims.                                                                                            

               With respect to the means for maintaining data entered into the display feature of claims 7 and 10,                     

               the examiner continues to cite column 6, lines 57-61 of Koide despite appellant’s assertions that there                 

               is nothing in that portion of Koide related to the examiner’s point.  Appellant is clearly correct that the             

               portion of Koide cited by the examiner is irrelevant to the claimed feature.  It appears that the examiner              


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