Ex Parte Genkin et al - Page 18



             Appeal No. 2006-1785                                                        Page 18               
             Application No. 10/768,827                                                                        

             Chance Co., 234 F.3d 654, 665, 57 USPQ2d 1161, 1167 (Fed. Cir. 2000)                              

             [emphasis added].  In the instant case, we find appellants' argument                              

             unpersuasive that the examiner has failed to provide a proper motivation for                      

             combining the teachings of McLain with the teachings of Ryzl. We note that                        

             the examiner's rejection is based on the finding that Ryzl teaches every                          

             element of the claimed invention except for the recited limitations of:                           
                   obtaining a response associated with said request from a data source, said                  
                   data source containing a plurality of requests acceptable to said target                    
                   computing system and a plurality of responses, each acceptable request being                
                   associated with a response that describes the expected behavior of said                     
                   target computing system upon receiving said acceptable request [claim 1].                   


                   We note that we have found supra that these specific limitations are                        

             taught by McLain.  We further note that the examiner has cited McLain for                         

             the purpose of showing that it was known to use a data source (i.e., see                          

             command response table, fig. 14) that contains a plurality of requests                            

             associated with responses that describe expected responses of a target                            

             system being emulated.  We agree with the examiner that the artisan would                         

             have been motivated to modify Ryzl with the teachings of McLain because                           

             McLain provides specific implementation details of a structure (e.g., see                         

             command response table, fig. 14) and associated method of responding to                           

             application requests intended for the target devices being emulated [see                          

             McLain, fig. 14, Command Response Table, Command 1414 (i.e.,                                      

             corresponding to a request) and associated Response 1416; see also col. 10,                       






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