Ex Parte SCHULTZ - Page 19



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


                     Mitsuhashi teaches a current analysis system which is performed in conjunction                                            
                     with a CAD program.  As the analysis is performed on the computer we find that                                            
                     the program to perform the analysis, the computer instructions, are inherently in                                         
                     a computer readable storage media.  Accordingly, we sustain the examiner’s                                                
                     rejection of claims in group E, claims 36-38.                                                                             
                                                           Group F (claim 39)                                                                  
                             Appellant argues on page 31 of the brief that that claim 39 is dependent                                          
                     upon claim 1 and that the arguments in support of claim 1 also apply.  Appellant                                          
                     also argues that the examiner’s rejection fails to provide a particular finding as to                                     
                     the reasons that one of ordinary skill in the art would be motivated to combine the                                       
                     references.                                                                                                               
                             The examiner states on page 9 of the answer:                                                                      
                             [t]he invention of Mitsuhashi and Huddleston teaches all [of] the features                                        
                             of the claimed invention except for including a first mode configured to                                          
                             select a predetermined set of technology parameters in response to a user                                         
                             input and a second mode configured to generate custom design                                                      
                             technology parameters in response to user input.                                                                  
                                     Cohen teaches a method and system for generating a mask layout                                            
                             of an optical integrated circuit wherein parameters entered by the user to                                        
                             construct the mask layout, such as device name, core width, and path                                              
                             lengths (Figures 4A-G), are entered by the user in response to a prompt.                                          
                             Cohen also teaches that the parameters are shown in a window with                                                 
                             default (i.e. predetermined) values allowing the user to enter custom                                             
                             parameters or select the predetermined default parameters (column 8,                                              
                             lines 48-65 and column 15, lines 52-65).                                                                          
                                     It would have been obvious … to modify the invention of Mitsuhashi                                        
                             and Huddleston to include a first mode configured to select a                                                     
                             predetermined set of technology parameters in response to a user input                                            
                             and a second mode configured to generate custom design technology.                                                



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