Ex Parte WU et al - Page 4




          Appeal No. 2001-2448                                                        
          Application No. 09/105,492                                                  


          not stored in a queue or dequeued therefrom and are, in fact,               
          used to control the operation of the queue (id.).                           
               In response to Appellants’ arguments, the Examiner asserts             
          that Kavipurapu’s elements 201, 203 and 205 are memory devices              
          and inherently contain decoding circuitry (answer, page 9).  The            
          Examiner also points out that, since specific kinds of decoding             
          devices and the memory transactions are not claimed, the                    
          operation of these elements of Kavipurapu in relation to the line           
          cache 206 are characterized as “memory transactions” (answer,               
          page 10).  Furthermore, the Examiner relies on the teaching of              
          the prior art that the request queue 202 operates in a FIFO                 
          manner (col. 9, lines 58-62) and concludes that the WRITE and               
          SEARCH commands of Kavipurapu are put in the request queue which            
          are dequeued in response to a control signal (answer, page 10).             
               Before addressing the Examiner’s rejection based on prior              
          art, it is essential that we understand the claimed subject                 
          matter and determine its scope.  Accordingly, we will initially             
          direct our attention to Appellants’ claim 1 in order to determine           
          its scope.  Claim interpretation must begin with the language of            
          the claim itself.  See Smithkline Diagnostics, Inc. v. Helena               
          Laboratories Corp., 859 F.2d 878, 882, 8 USPQ2d 1468, 1472 (Fed.            
          Cir. 1988).  See also Pitney Bowes, Inc. v. Hewlett-Packard Co.,            

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