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-
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