Appeal No. 1999-2375
Application No. 08/892,822
5-7 of the brief that the combination of the three references does not teach or suggest the
claimed invention and that the examiner’s position is not supportable. We disagree with
appellants. Appellants argue that the examiner’s inclusion of the teaching of Chambers to
minimize the decompression of the compressed protocol of Kikinis would not have been
for the same reasons as the claimed invention since the examiner maintains that the
compression of the BIOS would have been to save space. Appellants argue that the
motivation of the claimed invention was to decrease the time for bootstrapping. (See brief
at page 6 and specification at page 5.) We agree with appellants that the reasons are not
the same, but there is no requirement that they be the same. With respect to claim 1, we
note that there is no limitation concerning decreasing the bootstrapping time. Therefore,
this argument is not persuasive.
The examiner maintains that the shadowing of the BIOS in Bealkowski in
combination with the compression of a portion of the BIOS after the initial portion in Kikinis
would have met the invention as claimed, but for the Kikinis reference which does not
teach the decompressing of only the required part of the BIOS code. (See answer at
pages 3-4.) With respect to independent claim 1, we do not find any limitation of the
decompressing of only a required part of the BIOS. The examiner adds Chambers to
teach limiting the decompression of compressed data. In our view, we find no limitation for
limiting the decompression of the compressed portions of the BIOS in claim 1. The
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