Ex Parte BYUN - Page 11




          Appeal No. 2002-1280                                                        
          Application 08/995,996                                                      

          setting of the user defined code in the transmitter is not                  
          related to storing the user defined code in the receiver in                 
          either Drori or Karasawa.  The examiner's rejection does not                
          address the limitation of "transmitting the user defined code" in           
          a user defined code setting mode even though appellant has argued           
          the limitation several places.  Although it may seem like a minor           
          difference, every limitation must be considered in addressing               
          obviousness.  See In re Wilder, 429 F.2d 447, 450, 166 USPQ 545,            
          548 (CCPA 1970) ("every limitation positively recited in a claim            
          must be given effect in order to determine what subject matter              
          that claim defines").  Because the rejection does not address how           
          the limitation of "transmitting the user defined code" in a user            
          defined code setting mode in claim 1 is met by the combination,             
          the examiner has failed to establish a prima facie case of                  
          obviousness.  This limitation is also found in claims 9 and 12.             
          Claim 5 does not recite "transmitting the user defined code" in a           
          user defined code setting mode, but recites "transmitting the               
          user defined code to the receiver, thereby activating a user                
          defined code setting mode in the receiver " (emphasis added),               
          which is not addressed by the rejection.                                    







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