Ex parte GUTTAG et al. - Page 12




          Appeal No. 96-3494                                                          
          Application 08/160,299                                                      


          error by the examiner, we sustain the rejection of claims 7                 
          and 16.                                                                     
          With respect to claims 8 and 17 which are grouped                           
          together, the examiner asserts that Chu teaches a one’s                     
          constant source to supply a barrel rotator [answer, page 5].                
          Appellants argue that insertion of 1's into the shifter of Chu              
          does not make obvious the specific digital signal whose value               
          is “0001" as recited in claim 8 [brief, page 8].  The examiner              
          responds that Chu can provide a single bit of value “1" to the              
          shifter which would meet the recitation of claim 8 [answer,                 
          page 8].  Appellants reply that the prior art does not                      
          recognize the problem and does not make the claimed invention               
          obvious [reply brief, pages 4-5].                                           
          When the scope of claim 8 is considered, we agree with                      
          the examiner that the broad recitation of applying a data                   
          input of value “0001" would have been obvious to the artisan                
          in view of Chu’s teaching of inserting 1's into the shifter                 
          118.  We are of the view that the artisan would have                        
          recognized the obviousness of making any number of the least                
          significant bits “1" based upon the amount of shift or                      


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