Ex parte SHUDO et al. - Page 6




          Appeal No. 1997-0317                                                        
          Application No. 08/160,275                                                  

               teachings of the admitted prior art and the IBM                        
               reference because one of ordinary skill in the art                     
               at the time Appellants’ invention was made would                       
               have had no motivation to make such a combination.                     
               One of ordinary skill in the art would not have used                   
               the barrel shifter of the IBM reference in the print                   
               head of the admitted prior art because the barrel                      
               shifter serves an entirely different purpose                           
               (manipulating a set of data by shifting the data                       
               left or right by a desired number of bits) from the                    
               purpose of the shift registers/driver ICs of the                       
               admitted prior art (serially transmitting data for                     
               eventual parallel output)....Similarly, the IBM                        
               reference provides no indication that the barrel                       
               shifter recited therein could have been used in                        
               implementing a print head or a driver IC.  (Brief-                     
               pages 9 and 10.)                                                       




                    The Examiner contends that the purpose of combining               
          the references would be for “enhancing shifting speed between               
          registers.” (Answer-page 5.)                                                
                    We agree with Appellants.  There is no motivation in              
          the AAPA to look for a barrel shifter or any other adjustable               
          length shift register other than using the hindsight of                     
          Appellants’ improvement.  Surely, there are many adjustable                 
          length shift registers in the prior art, but the only                       
          suggestion of its desirability in a print head is found in                  
          Appellants’ specification, and not under the heading of “prior              

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