Ex parte YU - Page 7




          Appeal No. 1998-2542                                                        
          Application No. 08/266,306                                                  


          (answer, pages 4-7).                                                        
          Appellant makes the following arguments: 1) appellant                       
          argues that there is no suggestion in the applied prior art of              
          having a recording device perform reservation-record                        
          programming using the tuner or receiver of a device which is                
          separate from the recording device; and 2) appellant argues                 
          that the examiner has provided no motivation for combining the              
          teachings of Beyers with the admitted prior art to arrive at                
          the claimed invention, and consequently, has failed to                      
          establish a prima facie case of obviousness.                                
               We agree with the positions argued by appellant.  Beyers               
          teaches the scheduling of programs for a VCR or a television                
          receiver, but in either case, the tuner and the computer                    
          controller are located together internally.  Beyers provides                
          no motivation for separating the tuner from the controller.                 
          If Beyers’ circuits were simply incorporated into the                       
          conventional camcorder, the camcorder would have its own tuner              
          and there would be no external device as recited in the                     
          independent claims.  As noted by appellant, however, it was                 
          considered unsatisfactory to include a tuner in a camcorder                 
          because of size and cost constraints.  Although the examiner                
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