Ex Parte HO et al - Page 4




            Appeal No. 2004-0115                                                          Page 4              
            Application No. 09/363,637                                                                        


                   Claims 17-40 stand rejected under 35 U.S.C. § 103(a) as obvious over U.S.                  
            Patent No. 5,341,321 ("Karp").                                                                    


                                                  OPINION                                                     
                   Rather than reiterate the positions of the examiner or the appellants in toto, we          
            address the main point of contention therebetween.  The examiner admits "that Karp et             
            al do not specifically detail the claimed plurality of steps. . . ."  (Examiner's Answer at 3.)   
            Observing that "the equation (see col. 10, last line) is provided the same result as              
            claimed," (id.), however, he asserts, "it would have been obvious . . . to design the             
            claimed invention according to Karp et al's teaching because the reference is a floating          
            point system for performing square root operation as claimed."  (Id.)  The appellants             
            argue, "the algebraic equivalence of the equation on the last line of column 10 of                
            Karp . . . and any equation used to represent claim 17 does not make the recited                  
            combination of steps in claim 17 obvious."  (Appeal Br. at 21.)                                   


                   In addressing the point of contention, the Board conducts a two-step analysis.             
            First, we construe claims at issue to determine their scope.  Second, we determine                
            whether the construed claims would have been obvious.                                             











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