Ex parte HARWARD - Page 9




          Appeal No. 1997-2660                                       Page 9           
          Application No. 08/224,407                                                  


               For the foregoing reasons, we are not persuaded that                   
          teachings from the prior art would appear to have suggested                 
          the claimed limitation of circuitry for testing processing                  
          elements.  The examiner has not established a prima facie case              
          of obviousness. Therefore, we reverse the rejections of claims              
          12-20 under U.S.C. § 103.  Next, we address the patentability               
          of claims 1-11.                                                             


                            Patentability of Claims 1-11                              
               Our opinion addresses the following patentability issues               
          for claims 1-11:                                                            
               •    inadequacy of written description                                 
               •    indefiniteness                                                    
               •    obviousness.                                                      
          We begin by addressing the inadequacy of the written                        
          description of claims 1-11.                                                 
                                 Written Description                                  
               Under 37 C.F.R. § 1.196(b), we enter a new ground of                   
          rejection against claims 1-11.  "To fulfill the written                     
          description requirement, the patent specification ‘must                     
          clearly allow persons of ordinary skill in the art to                       
          recognize that [the inventor] invented what is claimed.’"                   







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