Ex parte YEO et al. - Page 8




               Appeal No. 1998-0871                                                                                                
               Application No. 08/406,301                                                                                          


               VCR by including a tuner within the single device.  While claim 1 calls for a switching means, the claim            

               does not specify how many switches are used.  With regard to appellants’ assertion (brief, page 5) that             

               Lim is an inappropriate reference because it is directed to a camcorder which includes a camera in                  

               contrast to appellants’ VCR-projector which has no camera, we note that the claims do not preclude                  

               the presence of a camera. We are not                                                                                

               persuaded by appellants’ arguments  (brief, page 5) that adding a TV tuner to the “portable”                        

               camcorder of Lim would make the camcorder non-portable, and furthermore that the combination                        

               would be impractical (brief, page 6) or that the combination would not be a technological advance                   

               (reply brief, page 2).  We do not agree with appellants that adding a tuner to Lim would detract from               

               the use of the camcorder in its normal operation.  In addition, being able to project TV signals in                 

               situations where a TV is not available would be a benefit of Lim’s system (col. 20, lines 64-67).  With             

               respect to appellants’ assertion (reply brief, page 2) that the claims require a tuner that is inherently           

               integral with the VCR-projector assembly, we agree with the examiner (answer, pages 4-5) that the                   

               claims do not require an integral tuner, and we note that Dunlap teaches the use of a VCR having an                 

               integral tuner (20).  With respect to appellants’ argument (reply brief, page 2) that even if a tuner pack          

               was included in the apparatus of Lim, it would require a jack to connect the tuner with the rest of the             

               apparatus of  Lim; we note that claim 1 recites  “without a jack between the projector means and either             

               of the VCR means or the tuner.”  We find that Lim discloses the projector to be an integral part of the             


                                                               (8)                                                                 





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