Ex parte FAIRBANKS - Page 6

               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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