Ex parte HILLIS et al. - Page 6




              Appeal No. 1999-2375                                                                                     
              Application No. 08/892,822                                                                               


              language of claim 1 recites “means for decompressing selected portions, for carrying out                 
              the prescribed functions, of the compressed BIOS code written to and stored in the system                
              RAM memory for expediting the initialization process of the data processing system.”  In                 
              our view, the selected portions of the compressed BIOS may be the remainder of the                       
              BIOS, since there are plural portions which individually are a part, but add up to the whole             
              remainder.  Therefore, we find that the examiner need not rely on the teachings of                       
              Chambers to teach or suggest decompression of less than the whole compressed portion                     
              of the BIOS.  Consequently, we agree with the examiner that the combination would have                   
              met the limitations of independent claim 1 as claimed.                                                   
                     While we note that appellants have additionally grouped dependent claim 11 and                    
              independent claims 6, 16 and 17 together with independent claim 1 at page 3 of the brief,                
              we note that independent claims 6, 16 and 17 specifically recite decompressing a                         
              “selected portion” of the compressed BIOS.  In view of our above interpretation, it would be             
              unfair to group these claims together.  Therefore, we address them separately as a group,                
              but we sustain the rejection of dependent claim 11 with the group including independent                  
              claim 1.                                                                                                 
                     In view of appellants’ argument concerning decompressing a portion or part of the                 
              compressed BIOS, and viewing the prior art applied as a whole, we agree with appellants                  
              that we find no motivation in the prior art to make the combination of teachings as                      


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