Ex parte LEE - Page 11




          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              
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