Ex parte STEWART et al. - Page 5

          Appeal No. 96-1422                                                          
          Application 08/048,339                                                      

          have little relevance to the subject matter set forth in                    
          independent claims                                                          
          6 and 12 on appeal.                                                         
               The lack of relevance of the combined teachings of both                
          references is so apparent that we find ourselves in complete                
          agreement with appellants’ position set forth at page 14 of                 
          the brief on appeal:                                                        
                    In In re Deminski, 796 F.2d 436 (Fed. Cir. 1986)                  
               the Federal Circuit adopted a “two-step test” for                      
               determining whether particular references are within                   
               the appropriate scope of the art.  First, it must be                   
               determined whether the reference is “within the                        
               field of the inventor’s endeavor.”  If it is outside                   
               that field, it must be determined whether the                          
               reference is “reasonably pertinent to the particular                   
               problem with which the inventor was involved.”  It                     
               is submitted that technology relating to minimizing                    
               the quantity of data sent from a host processor to a                   
               terminal is outside the field of Appellants’                           
               invention which is a method for reducing the size of                   
               a control store in a micro-programmed pipelined                        
               processor.  It is also submitted that the problems                     
               solved by the references relied upon by the Examiner                   
               have no relevance to the problems solved by                            
               Appellants.  The teachings of Berk and Harper are                      
               not reasonably pertinent, and thus, are non-                           
               analogous art.                                                         


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