Appeal No. 1999-2345
Application No. 08/610,758
The rejection of claims 1, 3, and 5-7 under section 103 as being unpatentable
over Finelli and Beveridge is set forth on pages 4 through 6 of the Answer. The
examiner turns to Beveridge to remedy a perceived deficiency of the Finelli reference.
According to the examiner, Finelli "does not explicitly show the use of a video camera
which is capable of capturing continuous motion images, so that one video picture from
a plurality of continuous video pictures can be selected." (Answer at 5.)
Appellants, for their part, contend (e.g., Brief at 6-7) that language in the
preamble of claim 1 distinguishes over the applied prior art. Claim 1, however, purports
a "video printer," rather than a video camera suitable for recording continuous motion
images. The claim, by its terms, appears to set forth a video printer for use with a video
camera suitable for recording continuous motion images. The preamble language thus
might be viewed as failing to further define or limit the invention. The preamble of a
claim does not limit the scope of the claim when it merely states a purpose or intended
use of the invention. In re Paulsen, 30 F.3d 1475, 1479, 31 USPQ2d 1671, 1673 (Fed.
Cir. 1994). Perhaps appellants wish to claim the combination of a video printer and a
video camera. Appellants describe, as at pages 4 through 6 of the instant specification,
and in instant Figure 2, a video printer 1 and a separate, attachable video camera 6.
In any event, appellants argue that Beveridge teaches "still image photography,"
and the combination of Finelli and Beveridge thus cannot teach "a video picture
selected from a plurality of video pictures recorded by a video camera as continuous
motion images," as recited in claim 1. The examiner responds (Answer at 9) that
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