Ex parte COX et al. - Page 6




          Appeal No. 1997-4127                                       Page 6           
          Application No. 08/044,241                                                  


          primary boot code’ and [’] when a cycle is executed to said                 
          other boot code or said system code.’"  (Id. at 10.)  The                   
          examiner replies, “a reasonable interpretation of this part of              
          the claim merely requires that a reference show two memory                  
          devices (e.g., a ROM and a FLASH EPROM as taught by Stewart)                
          that are enabled and disabled in a mutually exclusive manner.”              
          (Examiner’s Answer at 5.)  He adds, “Stewart teaches such                   
          selective enablement of two discrete memory devices, a flash                
          EPROM, and a ROM on a plug in card [col. 12:1-19].”  (Id.)  We              
          agree with the appellants.                                                  


               The examiner errs in interpreting the claims.  Each of                 
          claims 15-17 and 19-21 specifies in pertinent part the                      
          following limitations:                                                      
                         a system ROM ... for storing boot code                       
               including primary boot code for execution by said                      
               microprocessor upon power up of the computer system,                   
               other boot code and other system code, said system                     
               ROM comprising:                                                        
                              a flash EPROM ... for storing said                      
               other boot code and said other system code; and                        
                              a ROM ... for storing said primary                      
               boot code; and                                                         









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