Appeal No. 2006-3138
Application No. 09/683,351
Further, as pointed out by our reviewing court, we must first determine the scope
of the claim. “[T]he name of the game is the claim.” In re Hiniker Co., 150 F.3d
1362,1369, 47 USPQ2d 1523, 1529 (Fed. Cir. 1998). Therefore, we look to the
limitations as recited in independent claim 1. Here, the Examiner has relied basically on
the teachings of Mahurin. (Answer, pp. 5-14). From our review of the Examiner’s
statement of the rejection and of the responsive arguments (Answer, pp. 17-38), we
cannot agree with the Examiner’s finding concerning the combination of the references
and the suggestion in Isaman to use a separate read instruction for the read operation of
Mahurin.
Furthermore, we find that the Examiner maintains in the statement of the present
rejection that Mahurin teaches a read “operation” (the Final rejection just used the term
“read” without operation or instruction), the Final rejection also states that “a hardware
reduction can occur” (Final Rejection, p. 8, l. 6) and “[t]he hardware could then be
simplified and reduced in the reservation station” (Final Rejection, p. 8, ll. 13-14).
Appellant argues:
Throughout all of his rejections, the Examiner makes the flawed assumption that
in Mahurin, the "read operation" is an "instruction" executed by the functional
units 24 of Figure 1. That is, when Mahurin refers to "instructions," the Examiner
assumes that this necessarily includes the "read operation." At no point does
Mahurin refer to the "read operation" as an "instruction." At no point does
Mahurin even state the function units 24 perform the "read operation." Indeed,
that Mahurin does not refer to the "read operation" as an "instruction" strongly
indicates that Mahurin intends for the "read operation" to not be an "instruction."
Therefore, the Examiner cannot simply interpret the "read operation" as an
“instruction” in hindsight. Such an interpretation is clearly improper. (Br. 11, ll.
12-20).
We agree with Appellants that the Examiner seems to make the leap from the read
operation of Mahurin to the combination with Isaman which teaches separate instructions
to then detect and insert an extract instruction before the detected instruction.
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