Ex Parte WHITE et al - Page 8




          Appeal No. 2001-2610                                                        
          Application No. 09/052,247                                                  


          instruction which may, itself, direct a branch to be taken if the           
          branch target is beyond the next sequential instruction),                   
          branches beyond said “next sequential preselected instruction               
          set” so it is unclear how the branch taken in Mahalingaiah is               
          directed to the prefetching of a next sequential instruction if             
          the instruction is not an instruction-path-changing instruction.            
               With regard to claim 27, this claim specifically recites the           
          prefetching of “a next sequential instruction set...in response             
          to said predecode bits.”  The examiner relies on column 7, lines            
          63-65, of Mahalingaiah for this teaching.  That portion of the              
          reference recites that the “predecode bits form tags indicative             
          of the boundaries of each instruction.”  While this may designate           
          the range of desired data values to be accessed, as alleged by              
          the examiner [answer-page 9], it indicates nothing about                    
          prefetching a next sequential set “in response to” predecode                
          bits, as required by the instant claim language.  Accordingly,              
          since the examiner has not shown how, or where, every claim                 
          limitation is shown in the reference, we will not sustain the               
          rejection of claim 27 under 35 U.S.C. 102(e).                               






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