Appeal No. 2000-2232
Application 08/483,928
form of a single hand held structure no larger than a
comparable movie camera, and that it is unnecessary to design
the recording station as a continuously manually carried
portable structure, but to design it for optimum performance.
Thus, we find that not only does Camras not provide any
motivation to combine a camera, display unit, and
recording/reproduction device in a common housing, but
actually teaches one skilled in this art to the contrary.
We therefore agree with Appellant that the Examiner has
failed to set forth a prima facie case. The Examiner must
establish why one having ordinary skill in the art would have
been led to the claimed invention by the express teachings or
suggestions found in the prior art, or by implications
contained in such teachings or suggestions. The references of
record fail to provide express teachings or suggestions to
make the combinations suggested by the Examiner.
Therefore, we will not sustain the rejection of claims
21-23, 25-28, 30-32 and 34-37 under 35 U.S.C. § 103 as being
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