Ex parte GUTTAG et al. - Page 4




          Appeal No. 96-0908                                                          
          Application 08/160,118                                                      

               Claims 1-43 stand rejected under 35 U.S.C. § 112, second               
          paragraph.  The examiner states that in claims 1 and 13, with               
          respect to "'a register pair conditional store instruction',                
          it is not clear whether it refers to a special purpose                      
          instruction or a conventional conditional instruction" (FR2).               
               Claims 1-43 stand rejected under 35 U.S.C. § 103 as being              
          unpatentable over Auslander and Diefendorff.                                
               Claims 1-43 stand rejected under 35 U.S.C. § 103 as being              
          unpatentable over Kawata and Diefendorff.                                   
                                       OPINION                                        
          35 U.S.C. § 112, second paragraph                                           
               We agree with appellants that the term "register pair                  
          conditional store instruction" is definite.  Claims 1 and 13                
          describe the action performed "in response to" the instruction              
          and the "register pair conditional store instruction" is                    
          descriptive of the action.  It is not understood how the kind               
          of instruction has anything to do with definiteness.  The                   
          rejection of claims 1-43 under § 112, second paragraph, is                  
          reversed.                                                                   

          35 U.S.C. § 103                                                             
               Grouping of claims                                                     
                                        - 4 -                                         





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