Ex Parte IMAIZUMI et al - Page 4




              Appeal No. 1999-0474                                                                                         
              Application No. 08/674,452                                                                                   

                     The examiner responds (Answer at 6-11) that appellants’ arguments appear to                           
              be based on preamble language of claim 1, and, even if the scope of the claim is                             
              limited by the preamble, the limitations are met by Oho.  More to the point, the                             
              examiner asserts (id. at 10) that Oho teaches “a wiring logic table which identifies a                       
              candidate(s) from a plurality of load terminals which may be controlled by a selected                        
              input control switch (see col. 3, lines 45-47; col. 7, lines 50-60).”  Appellants respond, in                
              turn, that the claims are drawn to a design system that submits candidates to a                              
              designer.  “Oho’s logic table is predetermined and does not offer any candidates which                       
              may be controlled.”  (Reply Brief at 2.)                                                                     
                     In view of the respective positions set out by the examiner and appellants, there                     
              does not appear to be any substantial disagreement with respect to the details of the                        
              actual system disclosed by Oho.  Rather, the controversy turns on claim interpretation.                      
              Does instant claim 1 distinguish over the previously designed -- i.e., the end product --                    
              system described by Oho?                                                                                     
                     We agree with appellants that the system of Oho does not teach the limitations                        
              ascribed by the rejection.  Claim 1 requires that the processor identify candidates from                     
              the plurality of load terminals which “may be controlled” by the selected one of the                         
              control switches.  In our opinion, the relevant language of claim 1 does not include                         
              within its scope the wiring logic table and associated structure described by Oho.  The                      
              reference makes clear (e.g., col. 10, ll. 21-66) that the wiring logic table (CCTBL) is                      
              located in read-only memory (ROM), and configuration of the wiring system does not                           
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