Appeal No. 2005-0429 Page 6
Application No. 09/872,209
“setting the system in one of a first operating mode or a second operating mode.”
We find Appellants’ argument unpersuasive.
We note that both Appellants and the Examiner have given significant
weight to the word “user” in claim 1. We find this weight to be unjustified as there
are no structural elements in claim 1 that are not found in Shinohara. Appellants
are arguing that the structure of the claimed interface differs from the structure in
Shinohara merely because a “user” is the source of the “mode signal.” We find
the opposite. A claim containing a “recitation with respect to the manner in which
a claimed apparatus is intended to be employed does not differentiate the
claimed apparatus from a prior art apparatus”, if the prior art apparatus teaches
all the structural limitations of the claim. Ex parte Masham,
2 USPQ2d 1647 (Bd. Pat. App. & Inter. 1987). As pointed out by the Examiner in
the rejection of claim 1 (answer at pages 3-4), Shinohara teaches all of the
structure of the interface except that “the mode signal [is] from a user.” We
agree and as noted above, we find that the source of the mode signal is of no
significance as to the structure of the interface.
Appellants also argue at page 7 of the brief that “[t]he claimed ‘first mode’
is not simply a preliminary operation . . ., but rather is a complete imaging
operation.” We find this argument unpersuasive as no such limitations are found
in claim 1. Rather, the claim only requires that the “first operating mode uses the
internal timing element to control timing operation of the system.” We find no
claim limitations directed to the type of operation to be performed as argued by
Appellants.
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