Ex parte MCDERMITH et al. - Page 5




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


                                                The Rejection under 35 U.S.C. §103                                                     

                                                            Claims 9-12                                                                

                       With respect to claims 9-12, appellants contend that the following specific features of the claims              

               establish their unobviousness.  Appellants argue that “LOG/iC’s PLD Database program” of the                            

               LOG/iC PLD Compiler Manual does not provide for a price information feature.  Appellants contend                        

               that the art applied by the examiner teaches manual partitioning, not the required  automatic partitioning.             

               According to appellants, “fitting”, as taught in their application and as claimed, means automatically                  

               assigning input and output pins to the device in such a manner as to provide a means of successfully                    

               implementing a design into a selected device, and the prior art does not teach automatic “fitting”.                     

               Lastly, appellants contend that the prior art does not teach producing a list of devices that comprises an              

               ordered list of solutions.                                                                                              

                       After consideration of the positions and arguments presented by appellants, we have concluded                   

               that the rejection of claims 9-12 should be sustained.   With respect to appellants’ first argument, noted              

               above and related to pricing information, in the reference to Small in the paragraph bridging sheets 3                  

               and 4, it is disclosed that “HP’s HP PLD and Minc’s Logic Designer take into consideration such                         

               device-specific factors as power consumption, pricing, and inventory restrictions when making an                        

               automatic device selection.  As to appellants’ second and third arguments, in the first full paragraph of               

               the second sheet of Small, it is disclosed that software packages that can select devices and partition                 


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