Appeal No. 96-3302
Application No. 08/160,119
Appellants make several arguments in which they point to
several recitations of claim 1 which they assert are not
taught or suggested by Harmon [brief, pages 4-8]. Since we
essentially agree with all of appellants’ arguments, we will
limit our discussion to only one of the recitations of claim 1
which is not taught or suggested by Harmon.
The preamble of claim 1 ends with the phrase
“comprising the steps of for each M from 1 to N:” [emphasis
added]. Five steps are then recited which repetitively form
sums of data by masking and rotating data as a function of the
value of M. Thus, the steps of claim 1 not only must be
performed repetitively, but the steps within each repetition
change as the value of M varies from 1 to N. The examiner’s
only consideration of this feature of the invention is to
state that “[b]ecause repetition is well-known in the art (as
admitted by Applicant), the prior art renders obvious the fact
that, with each given iteration, the masks and rotation
amounts can change. Repetitions of this kind are particularly
common in arithmetic instructions (i.e. summations,
subtractions)” [answer, page 13, underlining added].
The examiner’s position is apparently that the Harmon
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