Ex Parte Sandbote - Page 12



          Appeal No. 2006-1450                                                              
          Application No. 09/933,786                                                        
                                                                                           
          motivation to combine the references, and that there is no                        
          showing that it would provide a reasonable expectation of                         
          success.  We note that Prioste was relied upon for its teaching                   
          of bit shifting with sign and zero extension.  We also find that                  
          Prioste provides adequate motivation for combining its teachings                  
          with that of Groves.  Particularly, at column 1, lines 42-44,                     
          Prioste indicates that its suggested approach increases the                       
          processing time of the data and reduce the cost of circuitry used                 
          for shifting.  Therefore, the combination of Groves and Prioste                   
          was proper and would thus provide a reasonable expectation of                     
          success.                                                                          
                It is our view, after consideration of the record before us,                
          that the evidence relied upon and the level of skill in the                       
          particular art would have suggested to one of ordinary skill in                   
          the art the invention as set forth in dependent claims 3-10,                      
          13-20 and 23-33.  Accordingly, we will sustain the Examiner’s                     
          rejection of claims 3-10, 13-20 and 23-33 over the combination of                 
          Groves and Prioste.                                                               






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