Appeal No. 1997-1571
Application No. 08/048,123
characteristics of the semiconductor integrated circuit being
designed are stored," let alone motivates one of ordinary
skill in the art to combine the references to arrive at the
subject matter of claims 9 and 16. We fail to see any
teaching, suggestion or motivation in the applied prior art
which would have led one of ordinary skill in the art to
modify Wada by storing "attributes of various editing objects
necessary for simulating characteristics of the semiconductor
integrated circuit being designed" in an attribute data base
storage unit to arrive at the claimed invention. It is our
view that the examiner's determination of obviousness is based
on impermissible hindsight reconstruction of the claimed
invention "wherein that which only the inventor taught is used
against its teacher." W.L. Gore & Assoc. v. Garlock, Inc.,
721 F.2d 1540, 1553,
220 USPQ 303, 313 (Fed. Cir. 1983), cert. denied, 469 U.S.
851 (1984).
Accordingly, we do not sustain the obviousness rejection
of claims 9 and 16. It follows that we do not sustain the
obviousness rejection of claims 13 and 14, which depend from
claim 9, and claims 11 and 12, which depend from claim 16.
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