Ex parte HASEGAWA - Page 3




                Appeal No. 1999-1797                                                                                                          
                Application No. 08/635,197                                                                                                    

                Trans. Computer-Aided Design of Integrated Circuits and Systems, vol. 13, no. 12, pp.                                         
                1450-60 (Dec. 1994).                                                                                                          
                         Claims 1-13 stand rejected under 35 U.S.C. § 103 as being unpatentable over                                          
                Ramachandran.                                                                                                                 
                         We refer to the Final Rejection (Paper No. 7) and the Examiner's Answer (Paper                                       
                No. 14) for a statement of the examiner's position and to the Brief (Paper No. 13) and the                                    
                Reply Brief (Paper No. 15) for appellant’s position with respect to the claims which stand                                    
                rejected.                                                                                                                     


                                                                 OPINION                                                                      
                         The rejection of claim 1 as being obvious in view of Ramachandran is set forth on                                    
                pages 3 through 7 of the Answer.  Appellant contends, as articulated on pages 5 through                                       
                10 of the Brief, that the article fails to disclose or suggest the claimed functions performed                                
                by the “difference extracting means” and the “extracted circuit information obtaining                                         
                means.”                                                                                                                       
                         The rejection, at page 5 of the Answer, points to the right column of page 1458 of                                   
                Ramachandran as disclosing a type of “extraction.”  The relevant passage in                                                   
                Ramachandran uses the phrase “extracting the difference.”  However, we agree with                                             
                appellant, as advanced on page 7 of the Brief, that the passage misses the mark with                                          
                respect to the “difference extracting means” requirements of claim 1.  The examiner’s                                         


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