Ex Parte Nemoto et al

Board of Patent Appeals and Interferences

Aug 30, 2002

08486114 (B.P.A.I. Aug. 30, 2002)

1
The opinion in support of the decision being entered today was
not written for publication and is not binding precedent of the
Board.
Paper No. 32
UNITED STATES PATENT AND TRADEMARK OFFICE
__________
BEFORE THE BOARD OF PATENT APPEALS
AND INTERFERENCES
__________
Ex parte TAKAYUKI NEMOTO, KUNIYOSHI SUSAKI, MASANORI UCHIDOI
and AKIHIKO SUZUKI
__________
Appeal No. 2000-1727
Application 08/486,114
___________
ON BRIEF
___________
Before HAIRSTON, FLEMING, and GROSS, Administrative Patent
Judges.
FLEMING, Administrative Patent Judge.
DECISION ON APPEAL
This is a decision on appeal from the final rejection of
claims 33,35-38, and 44-48. The remaining claims have been
canceled.
The invention is an image recording apparatus which enables
recording of one picture and a continuous recording of an image
signal.
Appeal No. 2000-1727
Application 08/486,114
2
Independent claim 33 present in the application is
reproduced as follows:
1. An image recording apparatus, comprising:
(A) recording means for recording an image signal obtained
by photoelectrically converting a light image to be recorded,
said recording means having a recording position on a changeable
recording medium;
(B) drive means for rotating said recording medium and said
recording means relatively to each other;
(C) feeding means for feeding said image signal to said
recording means;
(D) operating means for generating an operation signal for
operating said drive means and a recording trigger, according to
the operation thereof, said operating means generating the
operation signal and the recording trigger independently;
(E) change-over means for changing over a first mode wherein
an image signal for only one picture is recorded even when said
record trigger is sustained and a second mode where the image
signal comprising more than one picture is continuously recorded
on said recording medium as long as said record trigger is
sustained wherein said change-over means being arranged to
previously change-over said first mode and said second mode
before the recording operation of the image signal; and
(F) control means for recording the image signal for one
picture fed by the feeding means at the time of change-over to
the first mode of said change-over means, for recording the image
signal for one picture by feeding means onto said recording means
at predetermined intervals as long as said record trigger is
Appeal No. 2000-1727
Application 08/486,114
1 Appellants filed an Appeal Brief on August 9, 1999. We
will refer to this appeal brief as simply the Brief. Appellants
filed a reply brief on December 27, 1999. We will refer to this
reply brief as the Reply Brief.
2 The Examiner responded to Appellants’ Appeal Brief on
October 25, 1999. We will refer to this answer as simply the
Answer.
3
sustained at the time of change-over to the second mode, and for
continuing the rotation of said drive means until the recording
of the image signal for one picture which is being recorded, even
if the operation of said operating means is released during
recording operation of said recording means and said operating
signal is interrupted and thereafter stopping said rotation.
References
The references relied on by the Examiner are as follows:
Adcock 4,057,830 Nov. 8, 1977
Morishita et al. (Morishita) 4,188,642 Feb. 12, 1980
Rejections at Issue
Claims 33,35-38, and 44-48 stand rejected under 35 U.S.C.
§ 103 as being unpatentable over Adcock and Morishita.
Rather than repeat the arguments of Appellants or
the Examiner, we make reference to the brief1 and the answer2 for
the details thereof.
OPINION
The issue on appeal is whether claims 33, 35-38, and 44-48
are unpatentable under 35 U.S.C. 103 as being unpatentable over
Appeal No. 2000-1727
Application 08/486,114
4
Adcock and Morishita. The Examiner has provided a statement
withdrawing objections to patentability based on the judicially
created doctrine of double patenting. Therefore, that issue is
no longer on appeal.
Appellants first argue that Adcock and Morishita lack many
important features of the present invention, and when combined,
do not lead to the claimed invention. See Brief page 13, lines
15-17. Specifically, Appellants argue that Adcock does not teach
or suggest the first mode for recording one picture even if the
recording trigger is sustained and the second mode for
continuously recording the image signal, as called for in claims
33 and 44. See Brief page 12, lines 1-4. Further, Appellants
argue that Morishita does not disclose any change-over means of
claims 33 and 44, and only teaches a change-over between a single
image mode and the respective image mode with a switch (25). See
Reply Brief page 6, lines 5-8.
The Examiner argues that Morishita discloses a CCD imager
operable in single frame and repetitive frame modes having
change-over means (25) for changing over a first mode wherein an
image signal for only one picture is outputted and a second mode
wherein the image signal comprising more than one picture is
continuously outputted. See Answer page 11, lines 3-6.
Appeal No. 2000-1727
Application 08/486,114
5
The first step in our analysis is determining the scope of
Appellants’ claim. As the Federal Circuit has pointed out, “the
name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362, 1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998).
In determining the scope of Appellants’ claims, we find that
Appellants’ claims 33 and 44 claim two separate modes, such as in
the first mode only one picture is recorded even if the record
trigger is sustained and in the second mode a continuous picture
is recorded when the record trigger is sustained. Both claims 33
and 44 claim:
change-over means for changing over a first mode wherein an
image signal for only one picture is recorded even when said
record trigger is sustained and a second mode where the
image signal comprising more than one picture is
continuously recorded on said recording medium as long as
said record trigger is sustained wherein said change-over
means being arranged to previously change-over said first
mode and said second mode before the recording operation of
the image signal.
We agree that Morishita does teach two modes, one for
imaging and one for a series of repetitive images. Morishita
also teaches a switch being used to switch between two modes.
However, Morishita does not teach Appellants’ claimed change-over
means for changing over a first mode wherein an image signal for
only one picture is recorded even when said record trigger is
sustained and a second mode where the image signal comprising
Appeal No. 2000-1727
Application 08/486,114
6
more than one picture is continuously recorded on said recording
medium as long as said record trigger is sustained wherein said
change-over means being arranged to previously change-over said
first mode and said second mode before the recording operation of
the image signal.
In view of the foregoing, the decision of the Examiner
rejecting 33,35-38, and 44-48 under 35 U.S.C. § 103 is reversed.
REVERSED
KENNETH W. HAIRSTON )
Administrative Patent Judge )
)
)
) BOARD OF PATENT
MICHAEL R. FLEMING )
Administrative Patent Judge ) APPEALS AND
)
) INTERFERENCES
)
ANITA PELLMAN GROSS )
Administrative Patent Judge )
MRF:pgg
Appeal No. 2000-1727
Application 08/486,114
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