Ex parte SWOBODA et al. - Page 21




          Appeal No. 94-3053                                                          
          Application 07/832,661                                                      



                    Claim 9                                                           
                    Claim 9 stands rejected under 35 U.S.C. § 103 in                  
          view of Hester, d’Angeac and Poret.  Appellants argue that                  
          this rejection should be reversed because this claim recites                
          that:                                                                       
                    said serial scan circuit is interconnected                        
                    with said counter for loading said counter                        
                    with a value indicative of a predetermined                        
                    count to which said condition sensor is                           
                    thereby made sensitive,                                           
          and none of the references relied upon discloses these claimed              
          features.  Brief at 6.                                                      
                    In response, the Examiner states on page 8 of the                 
          answer that:                                                                
                    It would have been obvious to a person                            
                    having ordinary skill in the art to provide                       
                    Poret’s on-chip counters in Hester’s chip                         
                    because they support the clearly desirable                        
                    aspects of increased flexibility in                               
                    controlling debugging operations.                                 
          However, a review of Poret and d’Angeac fails to reveal why                 
          a person of ordinary skill in the electronic processor art                  
          would have reason to modify Hester’s circuitry to include                   
          Poret’s counters such that the serial scan circuit would load               
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