Ex parte NAKAIZUMI - Page 5




          Appeal No. 98-1643                                                          
          Application No. 08/544,582                                                  

          under test directly from that outside source.  Since there                  
          must be some source providing the input signals and measuring               
          the output signals, then that would be suggestive of using the              
          outside source, i.e., the tester signal processor, shown in                 
          the Fig. 4a embodiment.                                                     
               Thus, if there is an outside source inputting the signals              
          to, and receiving the output signal from, the circuit under                 
          test, then there is the suggestion of the two separate                      
          elements, i.e., a “testing set” and “a semiconductor chip or                
          wafer,” required by instant claims 1 and 2.                                 
               Even if there is no outside source shown in Fig. 14 of                 
          Leedy and the signals are input from, and outputted to, the                 
          tester/logic circuit 134, itself, the claim language is still               
          met because the “testing set” of the claims, as broadly                     
          recited, is not required to have any testing function.  The                 
          claims only require that the “testing set” supply inputs to                 
          the circuit under test and measure outputs from the circuit                 
          under test.  Clearly, something provides the input signals to,              
          and measures outputs from, the circuit under test.  Either                  
          such is supplied by an outside source, as suggested in Fig. 4a              
          of Leedy, in which case this is exactly what is claimed and                 

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