Appeal 2006-3087
Application 09/821,553
reference to the Brief (dated October 24, 2005), and the Answer (dated
January 26, 2006) for the respective details thereof.
ISSUES
Appellants contend that the Examiner’s rejection of claims 1 through 5
and 7 through 12 under 35 U.S.C. § 103(a) is in error. Appellants argue on
pages 7 and 12 of the Brief that Notten fails to teach a customer (a person)
inputting requirements for the CSD as claimed. Appellants assert that
Notten fails to teach a design output or anything with regard to the models
being hidden from the customers. Further, Appellants assert, on pages 13
and 14 of the Brief, that the Examiner’s findings are based upon hindsight
reasoning. Finally, on page 15 of the Brief, Appellants assert that the
modifications proposed by the Examiner’s rejection would change the
principal operation of Notten’s device.
The Examiner contends that the rejection of claims 1 through 5 and 7
through 12 under 35 U.S.C. § 103(a) is proper. The Examiner finds Notten
teaches that inputs from a user (which the Examiner considers to meet the
limitation of a customer) generate a design based upon the inputted data.
See pages 7 through 10 of the Answer.
Appellants’ contentions raise one issue for us to decide, whether
Notten renders obvious a method of designing a CSD where a customer
inputs at least one of the claimed CSD requirements into a model, which is
hidden from the customer, and a design is generated by the model.
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