Ex parte NYLUND - Page 11




          Appeal No. 1997-3821                                                        
          Application No. 08/570,256                                                  


          computer, and said controller chip is electrically decoupled                
          from the host computer when said connector is disconnected                  
          from the host computer," which makes it sufficiently clear                  
          from this language that the connector is carried by an edge of              
          the expansion circuit board.                                                
               The examiner acknowledges that Morgan "does not                        
          specifically show a connector between the memory controller 30              
          and the CPU bus on CPU board 15 of Figure 1" (Answer at 3) and              
          makes the following argument for adding such a connector:                   
               Since element 15 is described as a CPU board,                          
               it is reasonable to assume that CPU 20, boot ROM                       
               22 and memory controller 30 would each be included                     
               in separate packages having pins to connect to the                     
               CPU bus.  As the Applicant has stated, connectors                      
               are well known in the art.  Therefore, it would                        
               have been obvious to one of ordinary skill in the                      
               art at the time the invention was made to provide                      
               some sort of connector between memory controller                       
               30 and the CPU bus, and hence CPU 20.  The Examiner                    
               also notes that [the] claims do not recite any special                 
               functionality pertaining to the connector.  The                        
                    specification does not even describe the connector                
               in the abstract or summary and only briefly mentions                   
               it in one place, on page 4, line 4. [Answer at 3-4.]                   
          The examiner's position is unpersuasive.  The apparent reason               
          the connector is not mentioned at all in the abstract or                    
          summary and is only briefly mentioned in the specification is               
          that it was known to provide expansion circuit boards with                  

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