Ex parte TUMA et al. - Page 4




          Appeal No. 1997-4314                                       Page 4           
          Application No. 08/155,332                                                  


          device” [answer-page 3].  Thus, the examiner concludes that it              
          would have been obvious to make the block length programmable               
          by an external source so its value can be easily controlled.                
          The examiner also states that Takasaki “inherently” teaches an              
          input port by any line which connects the multiplier to the                 
          input source.  The examiner also realizes that Takasaki does                
          not teach an input port connected to a peripheral bus but                   
          contends that it would have been obvious to connect the input               
          port to a peripheral bus “because this would let the                        
          peripheral bus supply the multiplicands from any source                     
          connected to the bus” [answer-page 4].                                      
               For their part, appellants contend that Takasaki does not              
          suggest a “programmable” block length value, as claimed.  We                
          disagree.  We do not countenance the examiner’s contention                  
          that it is common knowledge that any input signal “could” be                
          programmed into a computer because this is not the proper test              
          for obviousness under 35 U.S.C. § 103.  Merely because                      
          something “could” be done does not, necessarily make it                     
          obvious to do so.  However, as broadly recited in independent               
          claims 1 and 9, “programmable” block length value merely                    
          indicates the ability to input a block length value.  As can                







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