Ex Parte TAIN - Page 6



          Appeal No. 2001-0326                                                        
          Application 09/007,138                                                      

               circuit design program into an output representation in a              
               format suitable for a package design program, comprising the           
               steps of:                                                              
               a converter program which converts the input representation            
               into an intermediate representation in a format suitable for           
               a mechanical design program; and                                       
               a mechanical design program which is adapted to                        
               automatically input the intermediate representation,                   
               identify and label the interconnects, and create the output            
               representation in which the interconnects are labeled.                 
          We note that claims 12 and 23, the only other independent claims,           
          recite similar limitations, as do the rest of the appealed                  
          claims, being the dependent claims.                                         
               On page 4, first column, third paragraph of the Examiner’s             
          Answer, the Examiner admits that Jimbo fails to teach “conversion           
          of a circuit design format to a package design output format”.              
          The Examiner provides an unsupported rationale that it would be             
          obvious to “convert data into formats suitable for use by                   
          particular CAD tools for easy design data management, this                  
          capability would extend to include the conversion from a format             
          necessary for circuit design application programs (one CAD tool)            
          to a format necessary for a package design program (another CAD             
          tool)”.  The Examiner asserts that a package design program is a            
          CAD tool. Further on page 4, second column, fifth paragraph of              


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