Ex parte LEE et al. - Page 8




          Appeal No. 1998-0866                                                        
          Application No. 08/698,707                                                  


          providing a magnetic roller as the recording mechanism as                   
          taught by Swanson.                                                          
               We reject appellants' notion that the references are not               
          combinable because "of the diverse approaches they teach"                   
          (brief, page 5).  Rather, we observe that the references                    
          simply teach different ways of recording different types of                 
          desired information on the magnetic strip portion of film.  In              
          the present instance appellants indicate a desire to provide                
          the same information (e.g. the owner's name and address)                    
          repeatedly for each frame of the film (specification, pages 2-              
          3).  Swanson teaches that his disclosed roller retains                      
          magnetic field strength so that it is capable of "multiple                  
          insertions" (col. 5, line 63) and "[t]he present invention                  
          should therefore not be seen as limited to the particular                   
          embodiment described herein..." (col. 6, lines 20-22).                      
               Likewise, we reject appellants' suggestion that "in                    
          Swanson et al. the roller wheel 106 appears to be at least as               
          wide as the filmstrip 14" such that "[i]ts use in Brock et al.              
          and Goto et al. would scratch the film exposures" and "[t]hus,              
          Swanson et al. would discourage one skilled in the art to make              
          the combination with Brock et al. and Goto et al." (brief,                  
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