Appeal No. 1998-0701
Application 08/263,744
supports appellant’s position that conventional 8mm camcorders
were known to operate on analog audio and video signals. The
examiner’s position could only be tenable if the examiner had
demonstrated that only digital recording and reproduction of
signals was known from conventional 8mm camcorders. The
present record does not support this position of the examiner.
Therefore, we find that the original disclosure
provides written description support for the phrase “an analog
audio and video signal” as recited in independent claims 1 and
10. Thus, we do not sustain the examiner’s rejection of the
claims as being based on an inadequate disclosure.
We now consider the various prior art rejections. In
rejecting claims under 35 U.S.C. § 103, it is incumbent upon
the examiner to establish a factual basis to support the legal
conclusion of obviousness. See In re Fine, 837 F.2d 1071,
1073, 5 USPQ2d 1596, 1598 (Fed. Cir. 1988). In so doing, the
examiner is expected to make the factual determinations set
forth in Graham v. John Deere Co., 383 U.S. 1, 17, 148 USPQ
459, 467
(1966), and to provide a reason why one having ordinary skill
-8-
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