Ex parte PAWATE et al. - Page 10




               Appeal No. 96-1319                                                                                               
               Application 07/934,982                                                                                           



                      Claim 12 recites a system in which the central processing unit “offloads a task to                        
               said integrated circuit to be executed by said processor.”  Witt specifically discloses that                     
               the advantage of a smart memory is that tasks can be offloaded from the host system                              
               computer to the smart memory processors [column 2, lines 49-52].  Therefore, we sustain                          
               the rejection of the invention as broadly recited in claim 12.                                                   
                      Claim 13 recites a system in which the processor “is halted during accesses to said                       
               integrated circuit.”  The examiner views this halting operation as equivalent to the                             
               prevention of the processor from executing as recited in the independent claims [answer,                         
               page 12].  Appellants traverse this position for the same reasons discussed with respect                         
               to the independent claims [reply brief, page 5].                                                                 
                      As we noted above with respect to claims 1, 11 and 16, the processor of the smart                         
               memory resulting from the teachings of Nicoud, Witt and Nusinov would not be connected                           
               at all when it is inserted into an existing system where the unused external lead remains                        
               disconnected.  Thus, the processor is not operational, or is halted, during external                             
               accesses from such an existing system.  We also observe that the artisan familiar with the                       
               operation of computers would have found it obvious to broadly halt the operation of a                            
               device when a higher priority request is made for the device.  Since access of the smart                         
               device from an external host system is clearly more important than its internal processing,                      
               we sustain the rejection of the invention as broadly recited in claim 13.                                        

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