Appeal No. 2006-1450
Application No. 09/933,786
shifted operand. In particular, at page 3 of the Appeal Brief,
Appellant states the following:
“Among other deficiencies, the reference does not teach
or suggest the limitations in claims 1, 11 and 21 that
each of the masked bits corresponds to a bit position
of the shifted operand. This mask allows for shifting
by any number of bits, from 1 to the length of the
word. Groves is directed to the manipulation of text
strings where each character occupies an entire byte
(col. 2, lines 44-47). Groves teaches shifting only by
entire bytes. There is no teaching or suggestion that
shifting be done at the bit level. In fact, Groves
teaches against this. If text strings were shifted by
numbers of bits other than entire bytes, then the bits
making up each character would be spread across two
bytes. When such shifted text is read byte-by-byte,
the correct characters would not be present.”
In order for us to decide the question of obviousness,
“[t]he first inquiry must be into exactly what the claims
define.” In re Wilder, 429 F.2d 447, 450, 166 USPQ 545, 548
(CCPA 1970). “Analysis begins with a key legal question-- what is
the invention claimed ?”...Claim interpretation...will normally
control the remainder of the decisional process.” Panduit Corp.
v. Dennison Mfg., 810 F.2d 1561, 1567-68, 1 USPQ2d 1593, 1597
(Fed. Cir. 1987), Cert denied, 481 U.S. 1052 (1987).
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