Ex parte SPROUSE et al. - Page 8




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

          "counter means" reads on the SRLs disclosed at column 6,                     
          lines 31-36, of Powell (EA4) because the SRLs form a string of               
          registers like appellants' ring counter 54 and are loaded with               
          a predetermined test pattern (EA10).  The examiner's                         
          interpretation of Powell does not fit the claim language.                    
               The SRLs in Powell do not perform any counting function.                
          Appellants' ring counter or circular shift register 54                       
          performs a counting function because the predetermined test                  
          pattern includes only one "1" in the shift register, which is                
          circulated through the register one step for each cycle                      
          (count).  The SRLs hold arbitrary test vectors, which are                    
          unrelated to any counting function.  That the SRLs may                       
          resemble appellants' ring counter 54 does not make the SRLs a                
          counter.  Furthermore, the output of the last SRL 40 is merely               
          digital data and is not a "test enable signal" as claimed.                   
          The claimed "enable signal" is a signal which activates                      
          "circuit means" to couple digital signals to a shared bus; the               
          "test enable signal" performs the same function in a test                    
          mode.  The enable signal in Powell is the input to multiplex                 
          gate circuits 48, 50, which is produced by the address                       
          decode/select circuit 52, not the output of SRL 40.  Because                 

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