Appeal No. 1998-1516
Application 08/420,540
With regard to the rejection of claims 7, 8, 17 and 18 under 35 U.S.C. 103, appellants argue
that Schlansker does not suggest the particular predictor constructs recited by these claims. More
particularly, the claims call for the first predictor construct being a “call instruction” and the second
predictor construct being “one that loads a table of contents pointer.” The processing of
these two particular instruction stream constructs is described at pages 13 et seq. in the specification.
The examiner realizes that Schlansker does not disclose the claimed call instruction or TOC
pointer predictor constructs. However, the examiner contends [Answer-pages 5-6] that all possible
instructions are covered by, and would have been obvious over, Schlansker. We disagree. Without a
specific teaching or suggestion by Schlansker to do so, we can only conclude that the examiner’s
finding of obviousness with regard to the call and TOC pointer predictor constructs was arrived at
through impermissible hindsight gleaned from appellants’ own disclosure. This is not a proper basis for
a conclusion of obviousness under 35 U.S.C. 103. Accordingly, we will not sustain the rejection of
claims 7, 8, 17 and 18 under 35 U.S.C. 103.
We have sustained the rejection of claims 1 through 5 and 11 through 15 under 35 U.S.C.
102(e) and we have sustained the rejection of claims 6, 9, 10, 16, 19 and 20 under 35 U.S.C. 103.
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