Ex parte SPROUSE et al. - Page 5




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

          (normal) mode and the internal buses 12, 16, and 18 are not.                 
          The examiner's rejection, which relies on internal buses 12,                 
          16, and 18 as the "bus means" is inconsistent with the                       
          language of claim 1.  The rejection of claim 1 and dependent                 
          claims 2, 3, and 18-20 is reversed.                                          
               Although we have reversed the rejection of claim 1, we                  
          address two of appellants' arguments for completeness.                       
          Appellants argue that "[i]t follows from a reading of Powell                 
          et al. that the modules are incapable of communicating among                 
          themselves as in the environment of Applicants' invention                    
          during test mode" (Br9) and that "['] ... [t]he present                      
          invention permits the bus access circuitry of each subsystem,                
          and the bus itself, to be tested by pseudo-random scan testing               
          methodology without restricting bus access to only one                       
          subsystem, and distributing that access during the test to all               
          subsystems'" (Br10, citing the specification, page 4).  Thus,                
          appellants argue that claim 1 requires that the units                        
          communicate over the bus during the test mode.  The examiner                 
          correctly discusses (EA8-9) that communication among the units               
          via the bus during the test mode is not claimed, expressly or                
          impliedly.  Claim 1 recites that "only one of the bus enable                 

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