Ex parte GUTTAG et al. - Page 20




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

          change" (Br10).  A similar argument is made with respect to                 
          the combination of Kawata and Diefendorff (Br20).                           
               The examiner notes that the instruction operation in                   
          Auslander "sets one or more condition bits but not all                      
          condition bits" (EA11) and "[t]hus, the unaffected bits are                 
          deemed to be protected" (EA11).  This does not address why one              
          of ordinary skill in the art of instruction set design would                
          have been motivated to provide masking bits in the instruction              
          as claimed.  The examiner could have provided examples of                   
          other instructions that had masking bits, but has not done so.              
          Auslander discloses that certain instructions set some status               
          bits, but leave others unchanged; e.g., the Divide Step (DVS)               
          instruction changes the Carry (CA) and Overflow (OV) condition              
          bits, but other condition bits are unchanged (col. 13,                      
          lines 6-11).  The unchanged bits might be considered to be                  
          "protected."  However, Auslander says nothing about the                     
          instruction including bits indicating which bits are to be                  
          protected.  Kawata discloses only a sign status bit and does                
          not describe changing only some status bits.  The examiner has              
          failed to establish a prima facie case of obviousness.  The                 



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