Appeal No. 1998-0701 Application 08/263,744 dependent on the record mode as recited in claim 1 [brief, pages 10-11]. Finally, appellant argues that there would be no motivation to combine Minoda’s video signals with the digital audio tape of Fukami [id., pages 12-13]. The examiner’s initial response to appellant’s argument that Fukami is not directed to analog audio and video data is to note that this claim limitation is new matter [answer, page 10]. This response is inappropriate because limitations of a claim cannot be ignored when making prior art rejections even if the claim limitations are unsupported by the disclosure. The examiner additionally attempts to find that the control data of Fukami meets the recitation of frequency and periodicity as recited in claim 1. We agree with appellant, however, that the byte of control data of Fukami does not meet the claim limitations for reasons explained on pages 10-11 of the brief. Since we agree with appellant that the means for generating a record mode discrimination signal as recited in claim 1 is not taught or suggested by the collective teachings of Fukami and Minoda, the examiner has failed to establish a prima facie case of obviousness. Therefore, we do not sustain -11-Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007