Ex parte PAWAR et al. - Page 4




              Appeal No. 1999-2681                                                                                        
              Application No. 08/656,998                                                                                  


                     It is respectfully submitted that Hyduk[e] does not disclose or suggest the                          
                     presently claimed invention including the comparator circuit to compare the                          
                     simulated output signal with the output signals to describe the expected                             
                     output of the digital circuit and wherein the operation of the simulation is                         
                     stopped if the difference is greater than a threshold value.                                         
                     Applicants agree with the Examiner that Hyduk[e] does not require the                                
                     simulation to stop if the difference has exceeded a threshsold [sic, threshold]                      
                     as claimed, as evidenced by page 3, lines 14-16 of the Final Office Action.                          
                     Hyduk[e] could not achieve the above mentioned advantages.                                           
                     Furthermore, Simoudis does not disclose or suggest the presently claimed                             
                     invention including the comparator circuit to compare the simulated output                           
                     signal with the output signals to describe the expected output of the digital                        
                     circuit to determine the difference between the simulated output value and                           
                     the output signal wherein the operation of the simulation is stopped if the                          
                     difference is greater than a threshold value.                                                        
                     Simoudis discloses the operation when the discrepancies and the                                      
                     discrepancy causes are disjoint and when the discrepancies and the                                   
                     discrepancy causes are related.  Under such conditions, Simoudis discloses                           
                     a particular operation.  However, this operation does not include stopping                           
                     the simulation, and consequently, Simoudis does not disclose the presently                           
                     claimed invention.                                                                                   
                     Despite requests, no prior art has been produced as required by                                      
                     § 2144.03 of the MPEP. How can this aspect be well known when the Examiner                           
                     cannot show this aspect in a single reference.  It is not well known, and the                        
                     Examiner is only using this faulty reasoning because no art can be found. No prior                   
                     art exists.                                                                                          
                     None of the applied prior art references discloses or suggests the presently                         
                     claimed invention including stopping the operation of the simulation if the                          
                     difference is greater than a threshold value.                                                        
                     There is only one place that this is taught, and this is in the Applicants'                          
                     specification.  The Examiner has used impermissible hindsight to reject                              

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