Appeal No. 2005-0001
Application No. 09/268,902
While we concur with the examiner, that Huddleston’s input steps teaches
an inducement to input design information, we also find that the inducement to
input design information is implicit in the system of Mitsuhashi. We find that the
system of Mitsuhashi is used in conjunction with a computer aided design (CAD)
program. (See column 5, line 65). Mitsuhashi teaches that the design
information of the core is inputted to the system prior to the current analysis of
the core, i.e. the entry of the design data by a user of the CAD system is a
preliminary step to the current analysis (see column 12, lines 51-55 and column
17 lines 56-57). We find that it is implicit in Mitsuhashi that the input of the
design information for the integrated circuit is in response to an inducement or
prompt. Thus, while we concur with the examiner that Huddleston teaches that
data concerning the design of an integrated circuit core is input in response to a
prompt, we find that this feature of Huddleston is cumulative of Mitsuhashi’s
implicit teaching of inputting design data in response to a prompt.
On page 13 of the brief, appellant argues that the “Office action fails to
provide particular findings as to the reasons a skilled artisan, with no knowledge
of the presently claimed invention, would have selected the cited references for
combination.”
In response, the examiner states, on page 16 of the answer,
[i]n the instant case, the Examiner maintains that based on knowledge
generally available to one having ordinary skill in the art, one would
recognize that since the invention of Mitsuhashi teaches mapping a grid
on a particular surface, it would have been obvious to combine a teaching
of supplying the dimension of that surface because in order to determine
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