Ex Parte SCHULTZ - Page 9



                     Appeal No. 2005-0001                                                                                                      
                     Application No. 09/268,902                                                                                                


                             In this case, the instant invention, Mitsuhashi and Huddleston are all                                            
                             concerned with improving the designing and laying-out of semiconductor                                            
                             devices, and are therefore analogous. ….                                                                          
                                     The Examiner asserts that, as noted above, the invention of                                               
                             Mitsuhashi does teach accepting information for at least one power zone                                           
                             of the integrated circuit core.  The Examiner further remarks that Appellant                                      
                             neglects to mention the teachings of Huddleston, specifically prompting                                           
                             the user to enter values for the length and width of the semiconductor                                            
                             core/die on which a plurality of cells are to be arranged (i.e. accepting                                         
                             design information of the integrated circuit core entered in response to a                                        
                             prompt) (column 4, lines 34-47).  Therefore, the combination of Mitsuhashi                                        
                             and Huddleston teaches all [of] the features of the instant invention as                                          
                             claimed.                                                                                                          
                             We concur with the examiner’s rationale.  We note that claim 1 does not                                           
                     call for the entry of length and width of the semiconductor in response a prompt,                                         
                     nonetheless these values are related to the design of the integrated circuit.  We                                         
                     also note that neither the examiner nor the appellant has provided a definition of                                        
                     what is meant by the claim limitation “in response to a prompt.”   One definition                                         
                     for the term prompt is “to induce an action.”2   The examiner’s statement of the                                          
                     rejection on page 5 of the answer states, “the program first requires (i.e. prompts)                                      
                     the user to enter values” thus suggesting that the examiner applied a similar                                             
                     meaning to the term prompt.  Appellant’s specification does not define or                                                 


                     use the term “prompt,” however in numerous instances the appellant’s                                                      
                     specification discusses a user entering design information, see for example page                                          
                     13, line 24.  Thus, we find that the meaning of the claim limitation “in response to                                      
                     a prompt” means in response to an inducement.                                                                             
                                                                                                                                               
                     2 Definition from The Random House College Dictionary, Revised Edition 1982.                                              

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