Ex Parte Falbo et al - Page 7



          Appeal No. 2006-1686                                                          
          Application No. 10/040,055                                                    
          argue that this is a new ground of rejection because appellants               
          have been arguing the layout beautification and layout                        
          imperfection limitations throughout the prosecution of the case               
          and the examiner has only in the answer concluded that such                   
          limitations appear in the non-limiting preamble.                              
               With regard to independent claim 11, it is true that Figure              
          4c of Agrawal shows a first shape comprising the first, second,               
          third, fourth and fifth edges, as claimed.                                    
               However, claim 11 also requires that the first shape be                  
          “configured to match a first type of layout imperfection.”  The               
          examiner says that this limitation is described in Agrawal at                 
          lines 20-23 of column 14.  The reference portion identified is                
          within claim 1 of the patent reference and recites:                           
                    accessing a definition of a first shape comprising                  
               a first edge and a second edge coupled in accordance with                
               a first plurality of properties associated with the first                
          shape.                                                                        
               This portion of Agrawal mentions nothing about “layout                   
          imperfection.”  In fact, Agrawal appears to having nothing to do              
          with layout imperfections or “layout beautification,” as                      





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