Ex parte MITSUHASHI et al. - Page 8




            Appeal No. 97-2582                                                                          
            Application 08/484,353                                                                      

            the switch 15.  As described, both switches are used to cause                               
            recording of image data onto the disk 23.  It would appear                                  
            that they are alternatives to each other.                                                   
                  Assuming for the moment that Kinoshita discloses a switch                             
            15 for recording image data and a switch 30 for reproducing                                 
            image data, both in the same embodiment, we further disagree                                
            with the examiner that in light of Taguchi’s multi-level push-                              
            button it would have been obvious to one with ordinary skill                                
            in the art to merge the functions of switch 15 and switch 30                                
            into a single push-button.  The appellants are correct that                                 
            the multiple functions activated by Taguchi’s single multi-                                 
            level push-button, i.e., (1) off, (2) supplying power to                                    
            applicable circuit elements to get them ready for operation,                                
            and (3) start recording, are not of the same type of                                        
            combination required by the appellants’ claims.  In our view,                               
            Taguchi would not have reasonably motivated one with ordinary                               
            skill in the art to merge the “recording” function and the                                  
            “reproduction” function onto a single control button.  What is                              
            missing is a teaching or suggestion about combining controls                                
            for opposite flow of information on a single switch.  The mere                              
            fact that a switch can be used to control plural functions                                  

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