Ex parte CARY R. CHAMPLIN - Page 8

          Appeal No. 97-2111                                                          
          Application 08/158,345                                                      

          Appellant argues that Burchard would not logically lead                     
          one to the limitations of claim 20 because Burchard “is directed            
          to self-testing of a boundary scan integrated circuit in a                  
          PRODUCTION environment ... and NOT in a operational environment”            
          [brief, page 8].  First, we find no language in claim 20 which              
          restricts operation to an operational environment as opposed to a           
          production environment.  Second, Burchard notes that his device             
          is operable for normal condition, production test and self-test             
          [column 8, lines 32-33].  This passage would have suggested to              
          the artisan that Burchard was designed to be used in an                     
          operational environment.                                                    
          In summary, since we have determined that the examiner                      
          has presented a prima facie case of the obviousness of the                  
          invention as broadly recited in claim 20, and since a                       
          preponderance of all the evidence and arguments supports the                
          examiner’s position, we sustain the examiner’s rejection of claim           
          We now consider dependent claims 21-25.  Each of these                      
          claims recites a specific relationship between an operation                 
          performed by the Boundary-Scan master while it is in certain                
          specific states.  Each of the states per se is admitted by                  
          appellant to be well known in the art [specification, page 8].              


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