Ex parte CARY R. CHAMPLIN - Page 11

          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.                                         


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