Ex Parte SKARPNESS et al - Page 9




          Appeal No. 2004-1676                                                         
          Application 09/263,918                                                       

          invention relates to performing ATM SAR functions with software              
          implemented in the CPU of a personal computer.  "On the other                
          hand, Kwak discloses a specialized ATM terminal to perform                   
          segmentation and reassembly, and discloses the use of a software             
          segmentation and reassembly device (SSID).  This specialized type            
          of ATM terminal is a type of prior art that Appellant's claimed              
          invention was designed to improve upon."  (RBr4-5).                          
               We agree with King, which position was adopted by the CCPA              
          in In re Prater, 415 F.2d 1393, 1406, 162 USPQ 541, 551 (1969)               
          ("appellant's invention ... was not obvious under 35 U.S.C. 103              
          because one not having knowledge of appellant's discovery simply             
          would not know what to program the computer to do").  However,               
          this is not the present fact situation.  Here, unlike Prater, the            
          functions to be performed are disclosed.  More importantly, we               
          find that Kwak discloses performing ATM SAR functions in software            
          using a CPU.  The only issue is whether it would have been                   
          obvious for the CPU of Kwak to be the CPU of a personal computer.            
               Appellants refer (RBr5) to the advantage that "the use of               
          software to perform the segmentation and reassembly reduces the              
          cost" (specification, page 6).                                               
               The advantage also applies to Kwak.  Kwak's invention is to             
          use software instead of hardware.                                            




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