Ex Parte Tobias et al - Page 3



          Appeal No. 2004-1716                                                        
          Application 10/106,631                                                      

               status register 65 bit positions are dynamically                       
               established, then the scan set logic 68 informs the                    
               system support processor 54.  Then the information in                  
               partitioning register 75 is transferred via bus 74 to                  
               the input logic of latches 71, 72 and 73 to set the                    
               interface latches.                                                     
               The examiner argues that “Byers’s combine[d] teachings of              
          71-73, 68 & 75, as a single collective, teaches the above argued            
          claim limitations (e.g., ‘a means for defining a scan path                  
          comprising the configuration registers and for communicating                
          configuration data for the peripheral device[’])”, and that “the            
          Byers- ‘interface latches 71, 72 and 73 of the MSU’                         
          represents/equates the claimed ‘configuration registers’; and the           
          Byers - a collective combination of ‘77, 75 & 65’                           
          represents/equates the claimed ‘means for defining a scan path              
          and for communicating configuration data for the peripheral                 
          device’; and the Byers- ‘52’ MSU represents/equates the claimed             
          ‘peripheral device’” (answer, page 5).                                      
               The appellants’ claim 2, however, does not only require a              
          peripheral device’s configuration registers and a means for                 
          defining a scan path, but also requires that the scan path                  
          comprises the configuration registers.  As set forth above, Byers           
          discloses that after the scan path has been used to establish the           
          bit positions of partitioning register 75 and system status                 
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