Appeal No. 2006-1595
Application No. 09/798,484
taken into consideration, in reaching our decision, the appellants' arguments set
forth in the briefs along with the examiner’s rationale in support of the rejections
and arguments in rebuttal set forth in the examiner’s answer.
It is our view, after consideration of the record before us, that the
specification reasonably conveys to the skilled artisan that the inventors had
possession of the claimed invention at the time the application was filed. We are
also of the view that the claimed invention constitutes statutory subject matter
under 35 U.S.C. § 101. Moreover, we conclude that the evidence relied upon
and the level of skill in the particular art would not have suggested to one of
ordinary skill in the art the obviousness of the invention as set forth in the claims
on appeal. Accordingly, we reverse.
We consider first the examiner’s rejection of claims 1-23 under 35 U.S.C.
§ 112, first paragraph. Regarding independent claims 1 and 7, the examiner
contends that the apparatus claims do not recite any hardware elements, but
merely logic statements or program logic [answer, page 6]. According to the
examiner, such claims therefore recite “form over substance” with no tangible
result [id.]. Regarding independent claims 1, 12, and 22, the examiner further
contends that the specification does not describe what constitutes a hierarchy as
claimed and how such a hierarchy is formed [answer, pages 6-10]. The
examiner also alleges that the specification fails to describe any logic, procedure,
or algorithm that is used to identify the hierarchy paths within the source code
and HDL model [id.]. Regarding independent claims 7, 21, and 23, the examiner
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