Ex parte SPROUSE et al. - Page 9




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

          Powell does not disclose a "counter means" which produces a                  
          "test enable signal," the rejection of claim 4 is reversed.                  
               In addition, appellants argue that "Powell et al. teaches               
          nothing corresponding to Applicant's 'means ... for                          
          communicating ... [a] test enable signal from each of the                    
          counter means to each associated circuit means in place of ...               
          [an] enable signal" (Br12).  A similar limitation is found in                
          claims 6 and 13.  The examiner addresses this limitation in                  
          connection with claim 13, where the examiner finds "selecting                
          the test signal in place of the enable signal when in the test               
          mode in column 4 lines 11-42" (EA6).  We find nothing in the                 
          referred to portion of Powell that teaches substitution of an                
          "enable signal" with a "test enable signal," regardless of the               
          names they might be called by in Powell.  While the signals                  
          applied by the address decoder/select circuit 52 in Powell                   
          could be termed "test enable signals," they do not substitute                
          for "enable signals" and also are not produced by a "counter                 
          means."  Because Powell also does not disclose substituting a                
          "test enable signal" for an "enable signal," the rejection of                
          claim 4 is reversed for this additional reason.                              

          Claim 5                                                                      
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