Ex Parte Mitra et al - Page 16



         Appeal No. 2006-1729                                                       
         Application No. 10/107,628                                                 
         compressed outputs (92).  Rajski also teaches that the compactor           
         comprises a plurality of Ex-OR gates.  Next, we find that Hong is          
         relied upon for its teaching of using nonzero binary values as             
         inputs to an EX-OR tree during the normal operation of a logic             
         circuit.  One of ordinary skill in the art would have duly                 
         recognized that Rajski’s teaching of implementing the compactor            
         with EX-OR gates amounts to the compactor having a plurality of            
         binary inputs and outputs, which could be represented in the form          
         of a matrix. Even though such mathematical characterizations of            
         digital logic circuits are somewhat common, they are not                   
         necessarily the sole and only manner of characterizing such                
         circuits.  Thus, at the time of the invention, without any                 
         specific teaching or suggestion4 to characterize the inputs and            
         outputs of the compactor in the form of a matrix, Rajski would             
         not have necessarily led the ordinarily skilled artisan to this            
         particular characterization of the compactor.  Unfortunately,              
         Hong does not remedy such deficiencies.  Consequently, we find             
         error in the Examiner’s stated position, which concludes that the          
         combination of Rajski and Hong teaches a compactor characterized           
         by a binary matrix having a row for each of the plurality of               
         circuit elements and a column for each compactor output.  It is            
                                                                                   
         4 We note that such a suggestion could have been obtained from the disclosure
         of Ivanov as provided in the discussion of representative claim 1 above.   
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