Appeal 2007-0439
Application 10/630260
indefinite. The second issue is whether the there is a legally sufficient
justification for reading the limitations of the claims 1 to 6 and 8 to 12 on the
reference ‘906 under 35 U.S.C. § 102(b).
FINDINGS OF FACT
Findings with respect to the rejection of claim 11 under 35 U.S.C. § 112, 2nd
paragraph:
1. A careful reading of Claim 11 shows an alternative structure.
The claim requires an IC component comprising two
independent logic portions, each being capable of being
alternatively configured to [do X] and to [do Y]. We notice that
X and Y are different. X requires that the logic portion
communicates with a host IC in a certain way, and Y requires
the logic portion receives information, not mentioning the host.
We do not agree with the Examiner’s conclusion that there is
only one configuration for each logic portion.
Findings with respect to the rejection of claim 1 to 6 and 8 to 12 under 35
U.S.C. § 102 (b):
2. Appellants have invented a system for configuring the logic on
integrated circuits (IC) between a one IC and at least one other
companion IC, which serves to reduce the total pin count and
thus the manufacturing costs as a whole. (Specification 2).
3. Examiner has read the claims on the ‘906 patent to Estakhri et
al. In his rejection recited in the Examiner’s Answer, page 4
and 5, the Examiner has recited how each claimed component
in Claim 1 is read on the reference. Appellants’ argument that
5
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