Appeal No. 1998-2565
Application 08/481,455
what the tape and drum speeds would be in the recording
process. Higuchi is directed to data compression (and
expansion) “at the time of reproduction” (emphasis added),
(column 1, line 14), and refers to itself as a “digital video
signal reproducing apparatus” (column 4, lines 20-21, and in
all claims).
The Examiner indicates a teaching of recording in
Higuchi (answer-page 4, line 5), but has not shown where this
teaching can be found. The Examiner relies on Amada for
reproduction at reduced tape speed, LP mode, but still at the
same head drum speed (answer-page 5). Thus we find the
Examiner has failed to set forth a prima facie case for the
claimed combination of recording and reproduction at the
respective tape and head drum speeds.
Appellants argue the differences between their
invention and the applied references on pages 3 and 4 of their
brief.1 In response the Examiner dismisses the differences as
1 Appellants contend their claims do not stand or fall
together (brief-page 2). However, pages 4-7 of the brief
merely recite the differences in what the claims cover, which
is not considered an argument for separate patentability, 37
-6-
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