Ex Parte HO et al - Page 7




            Appeal No. 2004-0115                                                          Page 7              
            Application No. 09/363,637                                                                        


                   Here, Karp's "invention relates to a data processing system having a floating              
            point arithmetic unit and, more particularly, to a method and apparatus for performing            
            floating point division and square root operations."  Col. 1, ll. 8-11.  "To determine a          
            square root of a value (A), the Newton-Raphson method first determines a reciprocal of            
            the square root of the value and then the resulting reciprocal is multiplied by the value."       
            Col. 10, ll. 51-54.  The equation cited by the examiner represents "iterations for the            
            reciprocal of the square root of the value (A) according to the conventional Newton-              
            Raphson method."  Although designing Karp's arithmetic unit to perform the claimed                
            steps may be possible, the examiner shows no objective evidence of the desirability of            
            the modification.  His statement that "the reference is a floating point system for               
            performing square root operation as claimed," (Examiner's Answer at 3), does not                  
            allege that, let alone explain why, such an extension would have been desirable.  We              
            will not "resort to speculation," In re Warner, 379 F.2d 1011, 1017, 154 USPQ 173, 178            
            (CCPA 1967), as to a possible explanation.  Therefore, we reverse the obviousness                 
            rejection of claims 17; of claims 18-21, which depend therefrom; of claim 22; of claims           
            23; of claims 24 and 25, which depend therefrom; of claim 26; of claims 27-29, which              
            depend therefrom; of claim 30; of claim 31; of claims 32-34, which depend therefrom; of           
            claim 35; of claims 36-40, which depend therefrom.                                                











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