Ex parte GUTTAG et al. - Page 12




          Appeal No. 96-1741                                                          
          Application 08/160,111                                                      


          is “0001" as recited in claim 8 [brief, page 9].  The examiner              
          responds that Chu can provide a single bit of value “1" to the              
          shifter which would meet the recitation of claim 8 [answer,                 
          pages 12-13]. Appellants reply that their inputs to the barrel              
          rotator are so different from the Chu rotator that Chu does                 
          not make the claimed invention obvious [reply brief, page 12].              
          When the scope of claim 8 is considered, we agree with                      
          the examiner that the broad recitation of applying a data                   
          input of value “0001" would have been obvious to the artisan                
          in view of Chu’s teaching of inserting 1's into the shifter                 
          118.  We are of the view that the artisan would have                        
          recognized the obviousness of making any number of the least                
          significant bits “1" based upon the amount of shift or                      
          rotation desired.  Therefore, we sustain the rejection of                   
          claims 8 and 47.                                          With              
          respect to claims 14 and 53 which are grouped together, the                 
          examiner relies on the mask of Chu to render the invention of               
          these claims obvious [answer, page 6].  Appellants argue that               
          Chu does not form the mask as recited in claim 14 [brief, page              
          10].  We agree with appellants’ argument with respect to these              
          claims.  The mask in Chu is used to modify one of the other                 
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