Appeal No. 97-2111 Application 08/158,345 combine teachings of Burchard with those of Gamache to arrive at the features broadly recited in claim 26, we also find that Burchard alone teaches elements of claim 26 which the examiner relies on Gamache to provide. For example, the examiner relies on Gamache to teach bus mastering [answer, page 7] although Burchard clearly suggests a bus master as discussed above. When claim 26 is properly interpreted to require nothing more than the detection of a signal such as EXTEST and a bus access request in response thereto, we agree with the examiner that this invention would have been obvious in view of the applied prior art. We now consider dependent claims 27-31. Each of these claims recites a specific relationship between an operation performed by the Boundary-Scan master while it is in certain specific states similar to the recitations of dependent claims 21-25. For reasons we have pointed out above, the examiner’s rejection does not properly address these claim limitations and they cannot be found in the applied prior art. Therefore, we again conclude that the examiner has failed to establish a prima facie case of obviousness for the invention as recited in claims 27-31. Accordingly, we do not sustain the rejection of these claims as proposed by the examiner. 11Page: Previous 1 2 3 4 5 6 7 8 9 10 11 12 13 NextLast modified: November 3, 2007