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.’"Page: Previous 2 3 4 5 6 7 8 9 10 11 12 13 14 15 16 NextLast modified: November 3, 2007