Ex parte SPROUSE et al. - Page 6




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

          means is coupled to the bus means at any moment in time during               
          the test mode of operation."  Such language includes, but does               
          not require communication between digital units during a test                
          mode using the bus means.  Nor does any other claim language                 
          require communication between units during the test mode.                    
               Appellants also argue that "assuming arguendo the                       
          correctness of position that the 'multiplex gates' 48/50 and                 
          the 'address decode/select circuit' 52 of Powell et al.                      
          correspond to the 'circuit means' and 'bus enable means' of                  
          Applicants' claim 1, Applicants are unable to find anything in               
          Powell et al. corresponding to the 'means coupled to the scan                
          control means and responsive to a test signal from the scan                  
          control means to couple the circuit means to the bus enable                  
          means to ensure that only one of the bus enable means is                     
          coupled to the bus at any moment in time'" (Br10).  The                      
          examiner finds that "the 'address decode/select circuit' is                  
          the 'coupling means' which controls which module is connected                
          to the bus through the use of the multiplex gates and ensures                
          that 'the module under test is operationally isolated from the               
          other modules'" (EA10).  This interpretation does not fit the                
          claim language.  The shift register latches (SRLs) 34, 35, 38,               

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