Ex Parte DAI - Page 7



          Appeal No. 2001-0184                                                        
          Application No. 09/002,173                                                  
          applied “regardless of the generation of the carry bit Ci in the            
          carry lookahead circuit on its right” [column 3, lines 15-16, of            
          Tomoji].                                                                    

               The examiner argues that this second circuit is disclosed by           
          Tomoji by “the corresponding circuit that provide [sic, provides]           
          the limited carry to gates 332 and 336" [answer-page 4].                    
          However, whatever is providing this limited carry in Tomoji                 
          always supplies the same suspense carry bit and so it is not                
          “based only on K bits of said augend and K bits of said                     
          addend...,” as claimed.                                                     

               Accordingly, since an important claim limitation is absent             
          from the teachings of Tomoji, Tomoji cannot anticipate the                  
          claimed subject matter and we will not sustain the rejection of             
          claims 1-7 and 9-11 under 35 U.S.C. 102(b).                                 

               Similarly, since we find no reason to modify Tomoji to                 
          provide for this deficiency, we also will not sustain the                   
          rejection of claim 8 under 35 U.S.C. § 103.                                 



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