Ex Parte Nightingale et al - Page 5


                Appeal 2007-2701                                                                              
                Application 10/079,811                                                                        
                Appellants note the Examiner relies upon Hollander at column 8, lines 39-44                   
                and column 10, lines 51-58 for the alleged teaching of “modeling operation                    
                of said software component using a software simulator” (independent claim                     
                1; see also the equivalent language recited in clause (i) of independent                      
                claims 15 and 16).  Appellants argue the cited column 8 discussion merely                     
                relates to “[a] report generator module 24 [which] provides textual and                       
                graphical information on the test results” (Hollander, col. 8, ll. 39-40).                    
                Appellants note that the cited column 10 discussion deals with a “co-                         
                verification extension module 174” (Hollander, col. 10, ll. 51-52).                           
                Appellants conclude that the Examiner has failed to establish a prima facie                   
                case of obviousness because at least the limitation of modeling the operation                 
                of a software component using a software simulator is not fairly taught or                    
                suggested by the proffered combination of Hollander and Platt (Br. 10-11).                    
                      The Examiner disagrees.  The Examiner notes that Hollander teaches                      
                a co-verification module that allows the simultaneous verification of a                       
                software component and hardware component (see Hollander, col. 10, ll. 51-                    
                58).  The Examiner finds these two components make up the device-under-                       
                test (DUT).  The Examiner further notes that Hollander discloses the DUT                      
                can be a complete system that comprises hardware having embedded logic                        
                (see col. 6, lines 50-55).  Thus, the Examiner finds the claimed “hardware                    
                component” encompasses the hardware portion of Hollander’s DUT and the                        
                claimed “software component” encompasses Hollander’s embedded logic in                        
                the DUT (see claims 1, 15, and 16).  The Examiner points to Hollander’s                       
                Figure 1 that shows the entire DUT 38 is simulated by Simulator 38.  The                      
                Examiner contends that in order to simulate the entire DUT, Hollander’s                       


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