Ex Parte PFAB - Page 3



          Appeal No. 2004-1020                                                        
          Application No. 09/486,908                                                  

          element or step thereof.  Constant v. Advanced Micro-Devices                
          Inc., 848 F.2d 1560, 7 USPQ2d 1057 (Fed. Cir. 1988); RCA Corp. v.           
          Applied Digital Data Systems, Inc., 730 F.2d 1440, 221 USPQ 385             
          (Fed. Cir. 1984).                                                           
               It is the examiner’s position, with respect to the                     
          independent claims 1 and 9, that Pawlowski discloses a data                 
          storage device in a main memory and I/O module, referring to                
          column 4, lines 5-15.  Referring to lines 34-45 and 54-60, of               
          that column, as well as Figure 1, item 14, the examiner cites               
          memory cells having stored data with selectable output addresses,           
          “wherein the specific starting address provided by the request of           
          data is used to determine which cache line or consecutive cache             
          lines in memory contain a beginning portion of the requested                
          data, and outputting the requested data with cache lines or                 
          consecutive cache lines, which are considered to be the selected            
          output start address” (answer-page 3).                                      
               Citing column 4, lines 34-45, column 5, line 66 to column 6,           
          line 10, and column 6, lines 19-35 and 50-59, of Pawlowski, the             
          examiner urges that the storage device responds to a data output            
          request by outputting the stored data beginning with a selected             
          output start address, “wherein the specific starting address                
          provided by the request of data is used to determine which cache            
                                         -3–                                          




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