Ex parte SWOBODA et al. - Page 27




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



                    Claim 28                                                          
                    Claim 28 stands rejected under 35 U.S.C. § 103 in                 
          view of Hester and Poret.  Appellants argue that this                       
          rejection should be reversed because this claim recites that:               
                    said serial scan circuit being                                    
                    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 neither Hester nor Poret discloses these claimed features.              
          Brief at 4.                                                                 
                    In response, the Examiner states:                                 
                    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.                                 
          Answer at 8.  However, a review of Poret 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 the                   

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