Ex parte SUN et al. - Page 6




          Appeal No. 1997-2112                                                        
          Application No. 08/398,831                                                  


          the Selected Edge-Under-Test (EUT) Unique I/O Sequence (UIO)                
          Set containing the Selected Edge-Under-Test (EUT) I/O                       
          Sequence,” along with two further statements limiting the step              
          or means for constructing a plurality of test subsequences.                 
          The recitation apparently relates to the second step (set                   
          forth on page 5 of the Answer) that is purportedly not taught               
          by the reference: “constructing a test subsequence for storage              
          in a memory.”  (Answer, page 5.)  However, the claims are more              
          specific than merely “constructing a test subsequence”; the                 
          claims recite how a plurality of test subsequences are                      
          constructed.                                                                
               The findings concerning motivation to modify the                       
          reference are also deficient.  Most seem to be based on the                 
          explicit disclosure of Dahbura, and yet the modifications                   
          depart from the teachings of the reference.  While we tend to               
          agree with the general statements such as “breaking a problem               
          into its component parts improves upon the controllability of               
          test generation” (Answer, page 6), the generalities do not                  
          address the claims at issue.  We would agree that breaking a                
          problem into smaller parts may have been obvious to the                     
          artisan.  However, the claims are specific with regard to how               
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