Ex parte HEDBERG et al. - Page 13

              Appeal No. 95-3658                                                                                                                          
              Application 07/777,877                                                                                                                      

              Claims 2-7, 10, and 16                                                                                                                      

                       Claims 2-7 require an "array built in self test (ABIST) system disposed on a single semiconductor                                  

              chip" (emphasis added) and claims 10 and 16 require a "built in self test system formed on a semiconductor                                  

              chip" (emphasis added).  These limitations require all the structure recited in these claims to be disposed                                 

              on the chip.  Harns is not an ABIST system on the same chip as the device to be tested and the examiner                                     

              has not cited an ABIST reference.  The examiner's only motivation for putting the test system of Harns on                                   

              the chip is that changes in semiconductor technology allow a designer to put more circuitry on a chip                                       

              (Examiner's Answer, page 3).  We agree with appellants' arguments (Brief, page 10) that there is no logical                                 

              motivation to put the test system of Harns on the same chip as the memory device because that would                                         

              require putting a BFRAM as large as the memory under test on the chip, doubling the size of the memory                                      

              just for the test circuitry.  Furthermore, because the BFRAM would not have been tested it would be                                         

              unsuitable for use as part of a testing system, that is, the BFRAM memory would have to be tested before                                    

              the memory array itself could be tested.  "The mere fact that the prior art may be modified in the manner                                   

              suggested by the Examiner does not make the modification obvious unless the prior art suggested the                                         

              desirability of the modification."  In re Fritch, 972 F.2d 1260, 1266, 23 USPQ2d 1780, 1783-84 (Fed.                                        

              Cir. 1982), citing In re Gordon, 733 F.2d 900, 902, 221 USPQ 1125, 1127 (Fed. Cir. 1984).  There is                                         

              no suggestion in the applied references for putting the test circuitry on the same chip as the memory array.                                

              Nor would putting the circuitry on the same chip produce a practical device.  Accordingly, the rejection                                    

              of claims 2-7, 10, and 16 is reversed.                                                                                                      

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