Ex Parte Feldman - Page 4




              Appeal No. 2001-2687                                                                                      
              Application No. 09/524,858                                                                                

              Col. 4, l. 65 - col. 5, l. 3.  Figure 3 of Cunningham illustrates the numerous chips and                  
              other components making up the boards.  Col. 5, l. 4 et seq.                                              
                     The physical relationship between the various boards and I/O module slots are                      
              shown in Figures 2b, 2c, and 2d.  Col. 11, ll. 24-26.  The motherboard 300 contains the                   
              bulk of the circuitry of the test system 100.  As illustrated in Fig. 3, the motherboard 300              
              includes standard PC motherboard components, integral VGA LCD/CRT display                                 
              controller 302, integral board mounted hard disk support 306, Flash BIOS 308A, 308B,                      
              a system memory 310, serial (312, 314) and parallel (316) ports, an optional floppy                       
              controller 318, and a power supply 320.  Col. 12, ll. 4-10.  The motherboard is made up                   
              of a four layer construction, with the majority of the components being surface mounted,                  
              such that all components can be mounted on one side of the board.  Id. at ll. 30-41.                      
                     Figure 2b of Cunningham depicts motherboard 300 as being substantially                             
              rectangular.  However, we agree with appellant that the above-quoted language of                          
              instant claims 36 and 40 distinguishes over the circuit boards and components                             
              disclosed by Cunningham.  We disagree with the examiner’s apparent claim                                  
              interpretation, as suggested at page 19 of the Answer.  If the functions of the claimed                   
              components were to be found in a single integrated circuit package, in our view the                       
              device would not meet the claim requirement that the components be “mounted” in a                         
              relatively flat housing.                                                                                  
                     We note that the relevant claim requirements are consistent with the structure of                  
              a multi-chip module, as disclosed by appellant.  The examiner refers to several                           
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