Ex parte PAWAR et al. - Page 6




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


              5.)  We disagree with the examiner conclusions in the statement of the rejection.                           
              Furthermore, the examiner has not set forth any convincing line of reasoning or statement                   
              of motivation to combine the teachings of the two references in the statement of the                        
              rejection.                                                                                                  
              While the examiner maintains that Simoudis teaches halting the execution, the examiner                      
              does not identify a teaching until page 7 of the answer in the response to argument                         
              section.  The examiner cites to columns 1-2 of Simoudis to teach “halting the execution                     
              cycle.”  This is discussed with respect to the background of the invention and three other                  
              related patent applications of Simoudis which matured into U.S. Patent 5,218,557, U.S.                      
              Patent 5,283,857 and U.S. Patent 5,101,362, but no further explanation or discussion with                   
              respect to the simulation is mentioned.  Similar to the examiner’s statement of the                         
              rejection, there is no statement of a motivation to combine this teaching with those of                     
              Hyduke.  Therefore, the examiner has not established a prima facie case of obviousness.                     
              Therefore, we cannot sustain the rejection of claims 1-7 under 35 U.S.C. § 103.                             
              Furthermore, we have reviewed the teachings of these three patents which are                                
              incorporated into Simoudis, but we find no express teaching or suggestion of stopping or                    
              halting a simulation process.  In our view, these three patents generally teach and suggest                 
              the redesign procedure in combination with the simulation and analysis of circuit operation,                
              but these references provide no express teaching or suggestion of stopping or halting a                     


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