Ex Parte MERRYMAN et al - Page 16




              Appeal No. 2001-2692                                                                   Page 16                 
              Application No. 08/789,001                                                                                     


              not contain this combination."  (Id.)  As construed in addressing the rejection by                             
              Modarres, claim 38 requires at least one bi-directional element.                                               


                      Because the method of Aubertine assigns input/output pins, we find that at least                       
              some of the pins are bi-directional.  Therefore, we affirm the anticipation rejection of                       
              claim 30 by Aubertine.                                                                                         


                      Fourth, observing that claim 3 "further limits some of the macro cells," (Appeal                       
              Br. at 29), the appellants argue, "[t]his limitation is not taught in any of the prior art of                  
              record. . . ."  (Id.)  As construed in addressing the rejection by Modarres, claim 3 further                   
              specifies in pertinent part the following limitations: "selected ones of the input macro                       
              cells include a boundary scan logic module, said boundary scan logic module having a                           
              number of terminals."                                                                                          


                      The examiner does not allege, let alone show, however, that the reference                              
              discloses the aforementioned limitations.  We will not resort to speculation as to such a                      
              possible disclosure.  Therefore, we reverse the anticipation rejection of claim 3 by                           
              Aubertine.                                                                                                     











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