Ex parte SPROUSE et al. - Page 4




          Appeal No. 96-0166                                                           
          Application 08/083,419                                                       


          Claims 1-3 and 18-20                                                         
               Claim 1 recites "a digital system of a type having at                   
          least two digital units coupled to a bus means that is shared                
          by the two digital units for communication of information                    
          therebetween on a mutually exclusive basis during a normal                   
          mode of operation" (emphasis added).  Powell states (col. 4,                 
          lines 20-23):  "To provide for interface between the modules                 
          in the operational mode, an operational bus 27 is provided for               
          carrying signals between various modules."  The modules in                   
          Powell are configured to provide a defined test boundary for                 
          the functional logic when in the test mode (col. 4,                          
          lines 40-42):  "When this test boundary is defined, the module               
          under test is operationally isolated from the other modules by               
          isolating the input/output of bus 27."  Only one of the                      
          modules is selected at a time by the address decode/select                   
          circuit in the test mode (e.g., col. 6, lines 51-52).  Powell                
          also states (col. 4, lines 5-8):  "It should be understood                   
          that the buses 12, 16, and 20 are only interfaced with the                   
          device pins 14, 18 and 24, respectively, during the test                     
          mode."  Thus, the "bus means" in claim 1 must be read on                     
          bus 27 in Powell because it is active during the operational                 
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