Appeal No. 2001-2692 Page 10
Application No. 08/789,001
method, 'Exhaustive Partitioning' (illustrated in FIG. 5), is used if there are fifteen (the
limit currently being used by the system) or fewer children to be placed in the parent."
(Id. at ll. 22-25.) Therefore, we affirm the anticipation rejection of claim 1 and of
claims 4-27 and 31-35, which fall therewith, by Modarres.
Second, observing that claim 2 "further limits the some [sic] of the macro cells,"
(Appeal Br. at 29), the appellants argue, "none of the prior art of record teaches this
limitation." (Id.) They make a similar argument regarding claim 28. (Id. at 40.)
Analogously, observing that claim 29 "further limits the macro cells," (Appeal Br. at 40),
the appellants argue, "[t]he prior art of record does not contain this element." (Id.)
Claims 2 and 28 further specify in pertinent part the following limitations: "one or
more of the number of macro cells are input macro cells." Analogously, claim 29 further
specifies in pertinent part the following limitations: "one or more of the number of macro
cells are output macro cells." Giving the claims their broadest, reasonable construction,
claims 2 and 28 require at least one input, and claim 29 requires at least one output.
Turning to the reference, "a flip-flop" is among the components placed by the
system of Modarres. Col. 1, l. 23. We find that the flip-flop inherently features inputs
and outputs. “To establish inherency, the extrinsic evidence ‘must make clear that the
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