Appeal No. 2001-0326
Application 09/007,138
Claims 3, 14, and 25 are rejected under 35 U.S.C. § 103(a)
as being unpatentable over Jimbo in view of Stager et al.
Claims 6, 7, 17, 18 and 27-28 are rejected under 35 U.S.C.
§ 103(a) as being unpatentable over Jimbo in view of Fulcher.
Opinion
With full consideration begin given to the subject matter on
appeal, the Examiner’s rejections and arguments of the Appellant
and Examiner, we cannot sustain the rejections of claims 1, 12
and 23 which were rejected under 35 U.S.C. § 103.
On page 8, lines 8-12 of the Appeal Brief, Appellant argues
that his invention “begins where Jimbo leaves off”. Appellant
argues that his invention “inputs data generated by a CAD program
(e.g. output data from a program for which Jimbo’s format
conversion produces input data) and converts it into an output
representation suitable for a package design program”. Appellant
points out that the Examiner admitted that Jimbo does not teach
the claimed limitation of converting a circuit design format to a
package design format. See Appeal Brief, Paper No. 9, dated
March 20, 2000, page 8, lines 29-31). Appellant further argues
that the Examiner has not provided any evidence which supports a
showing that prior art teaches or suggests enabling “a conversion
from a format necessary for a circuit design program to format
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