Appeal No. 1999-0134
Application 08/590,695
undergoes actual testing of the test program. The
determination of test patterns in Mannle, however, is not
based on portion-specific simulation test data, but instead,
is based on actual results of the device under test. The
simultaneous development and integration of test program sets
in Mannle does not teach or suggest using results from a
portion-specific simulation in determining the test patterns
to be applied to that portion of the circuit to be tested.
We also agree with appellants that the examiner has
essentially ignored specific recitations in the claims.
Appellants’ arguments set forth in sections IV-IX of the brief
point to specific recitations in the claims which are neither
taught nor suggested by the applied prior art. The examiner
either does not address these recitations or simply implies
that the recitations would inherently be present in the
applied prior art. When specific claim limitations are argued
by an applicant for patent, the examiner cannot simply dismiss
those limitations as being obvious when the applied prior art
does not provide an evidentiary record to support that finding
of obviousness. In this case, we find that the prior art
applied by the examiner does not support the examiner’s
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