Appeal No. 1998-2903
Application No. 08/607,305
dances over the prior art only touching the needed words, and then expanding thereon with
no support therefore, and subsequently, requires more evidence from appellants than he
has set forth in his rejection.
The examiner maintains that Mochida at col. 11 “shows that the ‘problem’ was
recognized in the prior art.” (See answer at page 13.) Appellants argue that Mochida
does not state a problem, but a statement of how the extra length of film was used in the
prior art for blind exposures. (See reply brief at page 4.) We agree with appellants that
Mochida does not clearly teach or suggest the problem solved by appellants. Appellants
argue that the applied prior art does not recognize the problem of optimizing the number of
frames from the set length of film, nor does it recognize the solution. (See brief at page 5.)
We agree with appellants.
Appellants argue that the testing of the shutter prior to loading the film as advanced
by the examiner in the final rejection does not teach the claimed sequence.
(See brief at page 5.) We agree with appellants. As pointed out by our reviewing court,
we must first determine the scope of the claim. "[T]he name of the game is the
claim." In re Hiniker Co., 150 F.3d 1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir.
1998). We find that the examiner has not provided a teaching or convincing line of
reasoning why one skilled in the art would have desired to modify the teachings of Mochida
to achieve the invention as recited in claim 46. Similarly, the examiner has not addressed
5
Page: Previous 1 2 3 4 5 6 7 Next
Last modified: November 3, 2007