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 conditions. 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. 9Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007