Appeal No. 2003-1622
Application No. 09/146,529
In reaching our decision in this appeal, we have given careful consideration to
appellants’ specification and claims, to the applied prior art reference(s), and to the
respective positions articulated by appellants and the examiner. As a consequence of
our review, we make the determinations which follow.
35 USC § 112, SECOND PARAGRAPH
The examiner maintains that appellants have provided no specific definition to
the term “instruction” and have used the term in various inconsistent ways throughout
the specification. (See answer at pages 4-7.) Appellants argue that the specification
and Figures 2a and 2b clearly describe that the decoder decodes the instruction
whether it contains one or two operation codes which are described as “operations” or
“sub-instructions.” (See brief at pages 14-16.) Appellants argue that the US patent to
Holmann uses the same terminology. (See brief at page 16.) While we do not find the
similar usage in the patent to be persuasive by itself, we do find that the portions of the
instant specification referenced by appellants do clearly shed light as to the various
uses of the term “instruction” in the present claims. The examiner goes on at length
regarding various interpretations of the claim language, but we do not find that this is a
point of indefiniteness. Rather, it appears to be one of breadth of the claim language,
which should be addressed with application of prior art under 35 USC §§ 102 and 103.
Therefore, we will not sustain the rejection under 35 USC § 112, second paragraph.
35 USC § 112, FIRST PARAGRAPH
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