Ex parte MCDERMITH et al. - Page 4




               Appeal No. 96-0137                                                                                                      
               Application 08/074,978                                                                                                  


               HP PLDDS Standard Utilities, HP Part Number 74150-90905, Hewlett-Packard Company, copyright                             
               1988.                                                                                                                   

               LOG/iC Design Made Easy, ISDATA Inc., 06/88, 4 sheets provided by appellants in the 7/20/93                             
               information disclosure statement (Paper No. 14).                                                                        


               LOG/iC data sheets, ISDATA Inc., 11/88, 6 sheets provided by appellants in the 7/20/93 information                      
               disclosure statement (Paper No. 14).                                                                                    

                       Claims 9-12 stand rejected under 35 U.S.C. § 103 as unpatentable over LOG/iC software,                          

               PLD Compiler Manual, in view of Small.                                                                                  

                       Claims 13 and 14 stand rejected under 35 U.S.C. § 103 as unpatentable over LOG/iC                               

               software, PLD Compiler Manual, in view of Small and the APS manual.                                                     

                       The respective positions of the examiner and the appellant with regard to the propriety of these                

               rejections are set forth in the final rejection (Paper No. 22) and the examiner's answer (Paper No. 30)                 

               and the appellant's brief (Paper No. 29).                                                                               

                       With respect to the prior art relied on by the examiner to reject claims 9-14, appellants make                  

               no argument that there is no motivation to combine the teachings in that art.  Rather, appellants take a                

               position to the effect that the combined art is deficient in a number of ways.  Appellants’ position is to              

               the effect that, although the prior art discloses apparatus and methods for selecting one or more                       

               electronic devices from a plurality of commercially available devices, the prior art does not disclose                  

               additional, specific features of their invention.                                                                       


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