Appeal No. 1998-2263
Application No. 08/692,612
35 U.S.C. §§ 102 and 103
At the oral hearing, appellant argued that the examiner did not attempt to read the
claimed algorithm embodied in independent claims 28 and 36 on the prior art references
and this is untenable in light of the holding in In re Lowry, 32 F.3d 1579, 1582-1583, 32
USPQ2d 1031, 1034-1035 (Fed. Cir. 1994). From our review of the prosecution history,
we agree with appellant. Here, the examiner postulates that any system of linear equations
may be solved by one skilled in the art. This begs the question why would a skilled artisan
have been motivated to devise such a methodology as recited in claim 28 without any
specific motivation thereto, whether such a methodology may be within the level of the skill
of the artisan or not.
Appellant argues in the brief at pages 15-18 that the claimed invention uses the
actual shape of the circuit element rather than circles and squares. We disagree with
appellant. The language of claim 28 merely requires a “method for modifying a distance
between a plurality of objects, each of the objects representing one of blocks, components,
and circuit cells in a physical circuit design.” The circles and rectangles of Shikata would
have been “blocks” as recited in claim 28. Later, in the argument concerning the rejection
under 35 U.S.C. § 103 appellant argues that the examiner “ignores most, if not all, of the
recited steps of the claimed invention.” (See brief at page 21.) We agree with appellant
that the examiner has not addressed the specific claim language of claim 28 in the
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