Appeal No. 1998-0922
Application No. 08/386,862
as a matter of obvious design choice. The Examiner’s ultimate
conclusion (Answer, page 4) is that the skilled artisan would
recognize that the mere change of form or shape or the shift
of location of a part does not impart patentability to a
claimed structure.
After reviewing Appellants’ arguments in response, we are
in agreement with Appellants’ position as stated in the
Briefs. It is our opinion that the Examiner’s finding that
any modification of the orientation of the internal circuit
substrate components of Kikutani would be an obvious design
choice is without support on the record, and could only come
from an improper hindsight reconstruction of Appellants’
claimed invention. In our view, there is a distinct
functional difference between Appellants’ VTR structure which
is designed to produce a compact housing unit while
accommodating a large screen display and the unitary structure
of Kikutani which is structured so as to allow monitoring of
the amount of tape while viewing the monitor. This functional
difference is achieved by the specific structural arrangement
in appealed claim 5 which results in a clear structural
difference over Kikutani in which no explicit disclosure of
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