Ex parte KAMIYAMA et al. - Page 7




              Appeal No. 96-2446                                                                                        
              Application 08/246,179                                                                                    


              Woods and IBM.  Moreover, the last sentence of paragraph one on page 8 of the answer                      
              states "[t]he combination of these two references [Woods and IBM] would yield a system                    
              that simultaneously stores a plurality of flag groups and then selects one of those flag                  
              groups based upon a conditional branch instruction."  The rejection is based upon a                       
              combination of all three of the references and the Examiner has not provided the                          
              motivation to combine all of the teachings.  The Examiner also states at page 7, line 5 of                
              the answer that "[t]hese two references [Woods and IBM] together sufficiently teach the                   
              Appellant[s'] invention."  From a review of the  record as a whole, it is unclear whether all             
              three of the references are being combined in the rejection and how the combination                       
              meets all the limitations of the claimed invention.                                                       
                     Appellants argue that IBM does not supply the teachings which are lacking in                       
              Woods.  (See brief at page 9.)  Appellants argue that the conditional branch instructions                 
              of IBM are not used to specify data width and IBM does not suggest the use of conditional                 
              branch instructions to specify data width.  We agree.  Appellants argue that                              
              IBM does not "simultaneously save a plurality of flag groups."  We agree, but find this                   
              limitation only in claim 12.  This limitation is not explicitly recited in claims 1 and 10, and           


              we will not read the limitation into these claims.  It is axiomatic that, in proceedings before           
              the PTO, claims in an application are to be given their broadest reasonable interpretation                


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