Ex parte SUN et al. - Page 7
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Appeal No. 1997-2112
Application No. 08/398,831
the method or apparatus goes about achieving the results of
breaking the problems into smaller parts and generating a
verification test sequence (Claims 14, 27, and 32) or testing
conformance of a machine under test (Claim 34).
The examiner’s opinions in the remainder of the Answer
have also been considered, but do not remedy the deficiencies
in the rejection with regard to the underlying facts necessary
to support a case of prima facie obviousness of at least
independent Claims 14, 27, 32, and 34. The rejection of those
claims, and the rejection of the depending claims, is
therefore not sustained.
The double patenting rejection
The examiner has provisionally rejected all claims under
35 U.S.C. § 101 as claiming the same invention as “claims 1-30
of co-pending application Serial No. 08/399020.” (Answer,
page 3.) No claim-to-claim comparison is set forth. The
offered analysis consists of the statement that “[t]he claims
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