Ex parte LIU - Page 18




                 Appeal No. 1996-1767                                                                                    Page 18                        
                 Application No. 08/220,410                                                                                                             


                 not in isolation but for what they fairly teach in combination                                                                         
                 with the prior art as a whole.  Id. at 1097, 231 USPQ at 380.                                                                          


                          Here, the rejection is based on the combination of                                                                            
                 Admission and Fujii.  The appellants admit that a LWDF was old                                                                         
                 and well known at the time of the invention.  For example,                                                                             
                 they specify, “[p]revious hardware implementations of the LWDF                                                                         
                 of Fig. 1 use the traditional structure (Fig. 2) ....”  (Spec.                                                                         
                 at 1.)  The appellants also describe “previous LWDF                                                                                    
                 architectures”.  (Id.)  The combination of Fujii’s CPU with                                                                            
                 the admitted LWDF would have resulted in the claimed invention                                                                         
                 in which a LWDF is connected to a CPU.                                                                                                 


                          Regarding claims 23 and 24, the appellants point out what                                                                     
                 the claims cover and allege generally that “[n]either Hirosaki                                                                         
                 nor Fujii discloses or suggests this aspect ....”  (Appeal Br.                                                                         
                 at 11-12.)   The examiner replies, “Fujii’s elements FF3 and2                                                                                                                    
                 FF4 provides [sic] the required multiplication coefficients.”                                                                          


                          2Hirosaki was not relied on in rejecting claims 23 and                                                                        
                 24.  Accordingly, we will not consider the appellants’                                                                                 
                 arguments relating the reference to claims 23 and 24.                                                                                  







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