Ex parte SPROUSE et al. - Page 7




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

          40, which the examiner finds to be the "circuit means," are                  
          always coupled to the multiplex gates 48, 50, which the                      
          examiner finds to be "bus enable means."  They are not coupled               
          to gates 48, 50 by the address decode/select circuit 52                      
          "responsive to a test signal from the scan control means," as                
          claimed.  If claim 1 recited coupling the circuit means to the               
          "bus means" instead of to the "bus enable means," this would                 
          be a different issue.  This is an additional reason why the                  
          rejection of claims 1-3 and 18-20 must be reversed.                          

          Claim 4                                                                      
               Claim 4 recites "digital signals being coupled to the                   
          shared bus means by circuit means enabled by the assertion of                
          an enable signal" and a "counter means, associated with                      
          circuit means of each of the digital units ... for producing a               
          test enable signal" and "means for presetting the counter                    
          means with a predetermined test pattern."  Claim 4 does not                  
          recite that the shared bus means is operative during a normal                
          mode.                                                                        
               Appellants argue that Powell does not teach "counter                    
          means" and it follows that it cannot have "means for                         
          presetting the counter means" (Br11).  The examiner finds that               
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