Ex parte CARY R. CHAMPLIN - Page 9

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

          Nevertheless, the invention is disclosed to be in the operations            
          performed by the Boundary-Scan master while it resides in various           
          ones of these states.  Claims 21-25 specifically recite these               
          While we cannot address the question of whether prior art                   
          Boundary-Scan masters have been known to operate in the claimed             
          manner, we can address the fact that neither Burchard nor Gamache           
          teaches or suggests what operations take place while the Burchard           
          Boundary-Scan master is in any of the conventional states.                  
          Burchard does not mention any of the conventional states of a               
          Boundary-Scan master within the JTAG standard.  Even if these               
          states are known to exist in the Burchard Boundary-Scan master,             
          there is absolutely no evidence that the operations recited in              
          claims 21-25 are performed during the states as claimed.  The               
          examiner at most has found that the operations as claimed must be           
          performed by the Burchard device, but the examiner has otherwise            
          ignored the claimed relationships of the operations to the                  
          states.  Therefore, with respect to claims 21-25, the examiner              
          has failed to establish a prima facie case of obviousness.                  
          Accordingly, we do not sustain the rejection of these claims as             
          proposed by the examiner.                                                   


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