Ex Parte Sandbote - Page 8



          Appeal No. 2006-1450                                                              
          Application No. 09/933,786                                                        
                                                                                           
                We note that independent claim 1 reads in part as follows:                  
                     “The shift post processor comprises a decoder to decode                
                     the offset parameter into the mask field, the mask                     
                     field having a plurality of bits, each of the mask bits                
                     corresponding to a bit position of the shifted                         
                     operand.”                                                              
                At page 11, paragraph 0054, Appellant’s specification                       
                states:                                                                     
                     The decoder 710 receives the OFFSET parameter and                      
                     generates a shift field mask MASK [1 . . . N]. The                     
                     shift field mask has N bits, mask(l) to mask (N),                      
                     corresponding to N-bit word of the shifted operand. The                
                     shift mask field defines the bit positions that are                    
                     affected by the post processing operations. In one                     
                     embodiment, a logical one in the mask(k) indicates that                
                     the bit at the k-th position is affected by the post                   
                     processing operation, and a logical zero allows the bit                
                     at the k-th position to pass through unmodified. The                   
                     decoder essentially converts the OFFSET value into a                   
                     bit pattern having a group of consecutive mask bits                    
                     that corresponds to the portion of the operand to be                   
                     operated upon.                                                         
                Thus, the claim does require that each of the masked bits                   
          corresponds to a bit position of the shifted operand.                             
                Now, the question before us is what Groves would have taught                
          to one of ordinary skill in the art?  To answer this question, we                 
          find the following facts:                                                         
                1. Groves states, at column 1 lines 22-28, that:                            
                     In modern data processing systems, this storage unit of                
                     data is termed a word and consist of 16 binary digits                  
                     or bits.  Words may also consist of 32, 48 or 64 bits                  
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