Appeal No. 96-1119
Application 07/690,176
be in Kneib” [answer, pages 9-10]. The examiner makes the
exact same statements with regard to the rejection of claim 8
as anticipated by Fowler [answer, page 11]. Thus, the
examiner’s position is that the claimed step of using the
computer program shown in Figures 5 through 182 is inherently
part of the operation of Kneib or Fowler.
Appellants argue that the software implementation of
the claims is not equivalent to the hardware implementation of
Kneib and Fowler. We agree. The fact that software can be
designed which is logically equivalent to hardware fails to
properly address the requirements of making a prior art
rejection. Independent claim 2 recites that a specific
program shown in Figures 5 through 182 must be used in
carrying out the method of the invention. There is no
evidence that the hardware of Kneib and Fowler uses this
specific program. There can be no anticipation of the using
step of claim 2 in the absence of a disclosure that the
incorporated computer program exists. The examiner has also
provided no evidence to support a position that the specific
computer program recited in claim 2 would have been obvious
over the hardware disclosed by Kneib and Fowler. Thus, there
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