Ex parte GUTTAG et al. - Page 12




          Appeal No. 97-1057                                                          
          Application 08/160,298                                                      


          significant bit.  Therefore, we sustain the rejection of                    
          claims 2, 3, 43 and 44.                                                     
          We now consider the rejection of claims 9 and 50 which                      
          are grouped together.  Claim 9 depends from claim 1 and                     
          recites that a plurality of data registers receives an input                
          from the output of the ALU and an input from the output of the              
          shifter.  The examiner has provided a reasonable analysis as                
          to why the presence of registers, as broadly recited in claim               
          9, would have been obvious to the artisan in view of the                    
          applied prior art.  Appellants argue that Chu does not show                 
          such a register at the output of the shifter, but this                      
          argument fails to address the obviousness of broadly providing              
          such a register.  Appellants also argue that “claims 9 and 50               
          require storage of both the output of the arithmetic logic                  
          unit and the output of the shifter during the same operation.               
          Neither Chu et al nor Vassiliadis et al show the claimed                    
          simultaneous storage of these two outputs in any mode” [brief,              
          page 10].  We agree with the examiner that this argument of                 
          appellants is not commensurate in scope with the claimed                    
          invention.  We find nothing in claim 9 which requires the                   
          simultaneous storage as argued by appellants.  Since                        
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