Appeal No. 2001-2692 Page 17
Application No. 08/789,001
Anticipation Rejection of Claims 1-35 by Piednoir
We address a point of contention between the examiner and the appellants. The
examiner cites "col. 6, line 37 to col. 10, line 58" of Piednoir. (Examiner's Answer
at 15.) Observing that "[c]laim 1 is an independent apparatus claim limited to the
combination of three (3) elements," (Appeal Br. at 28), the appellants argue, "[t]he
Examiner has not alleged that any of the prior art has any of this [sic] elements." (Id.)
As construed in addressing the rejection by Modarres, independent claim 1 requires
assembling a circuit design in accordance with parameters provided by a user and
predefined circuit design rules. Claim 35, the other independent claim rejected by
Piednoir, requires the same.
The examiner does not allege, let alone show, that the reference discloses
assembling a circuit design in accordance with parameters provided by a user and
predefined circuit design rules. We will not resort to speculation as to such a possible
disclosure. Therefore, we reverse the anticipation rejection of claim 1; of claims 2-34,
which depend therefrom; and of claim 35 by Piednoir.
"The PTO Rules of Practice require the examiner to cite only what he considers
the 'best references.'" E.I. duPont de Nemours & Co. v. Berkley & Co., 620 F.2d 1247,
620 F.2d 1247, 1266-67, 205 USPQ 1, 16 (8th Cir. 1980). "The examiner is not called
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