Appeal No. 1998-0723
Application 08/570,851
We agree with the position argued by appellant. The
rejection never addresses the specific limitations recited in
claims 1 and 5. The rejection simply concludes that the
invention must be obvious because it achieves the same result
as the generic design checker of Spence. The claimed
invention, however, is directed to specific steps which must
be performed by the design checker to achieve the desired
result. The examiner’s position is tantamount to asserting
that no design checkers can be patentable if they merely
achieve the known result desired for any design checker. The
claimed invention is directed to the details of the manner of
performing the design check, and these specific details have
not been addressed by the examiner nor are they suggested by
the broad recognition of the problem in Liebmann and Spence.
Since the rejection fails to address the specific
limitations of independent claims 1 and 5, the examiner has
failed to establish a prima facie case of obviousness.
Therefore, we do not sustain the examiner’s rejection of
claims 1 and 5 or of claims 2-4 and 6-8 which depend
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