Appeal No. 1999-2307
Application No. 08/711,074
at 1444 (“In reviewing the examiner’s decision on appeal, the Board must necessarily
weigh all of the evidence and arguments.”). With these principles in mind, we
commence review of the pertinent evidence and arguments of Appellant and Examiner.
Appellant argues on pages 8 and 9 of the brief that Kazami and Yoshida do not
teach or suggest using a signal magnetic head for recording an information signal in one
region of a photographic film and for recording a second signal of direct current or
alternating current on another region of a photographic film. In particular, Appellant argues
that the Examiner’s proposed modification of Kazami in which the substitution of an
alternating current signal for the second information signal of Kazami but not the first
information signal makes no sense. See page 2 of the reply brief.
In order for us to decide the question of obviousness, "[t]he first inquiry must be into
exactly what the claims define." In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970) “Analysis begins with a key legal question -- what is the invention claimed?”.
. . Claim interpretation . . . will normally control the remainder of the decisional process.”
Panduit Corp. v. Dennison Mfg. Co., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597
(Fed. Cir. 1987), cert denied, 481 U.S. 1052 (1987).
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