Appeal No. 1996-4089
Application 08/227,293
secondary references to Lipton, Yoshida, Omoda, or Binoeder would have taught or suggested the
specific design rule (rule (3)) of determining permitted and prohibited clear signal distribution schemes.
The examiners admit that Watkins fails to teach providing this specific design rule (Answer, page 5),
and then rely on any of Lipton, Yoshida, Omoda, or Binoeder to teach this feature. However, the
examiners notably fail (Answer, pages 5 to 6) to assert that any of the secondary references specifically
teach determining permitted and prohibited clear signal distribution schemes (claims 20 and 26), or any
of the other specific rules (see claims 21 to 25), and instead aver that these rules are "well known
methodologies" that would have been obvious to implement in order to optimize circuit operation.
Accordingly, we cannot sustain the rejection of claims 20 to 26 under 35 U.S.C. § 103.
With respect to claims 20 to 26, we further note our agreement with appellant (Brief, pages 11
to 12) that Watkins and Lipton teach away from each other since Watkins (as well as appellant’s
claims 20 to 26) concerns circuit design and testing which takes place prior to physical circuit
implementation, whereas Lipton pertains to testing done after physical circuit implementation.
Although we find that the examiners have made a prima facie case of obviousness as to the
appealed claims, we conclude that appellant has rebutted this prima facie case by successfully showing
that the specific design rules of the appealed claims are neither taught nor would have been fairly
suggested by the secondary references. In view of the foregoing, the decisions of the examiners
rejecting claims 17, 18, and 20 to 26 under 35 U.S.C. § 103 are reversed.
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