Appeal No. 1997-2660 Page 7
Application No. 08/224,407
tested ... but also the data lines (96, 98 & 100) [data path]
can be tested while testing each of the memory arrays." (Id.
at 10-11.) We agree with the appellant.
Each of claims 12-20 specifies in pertinent part the
following limitations: "testing said specific functions of
said plurality of processing elements of the data path with
data path test circuitry ...." In summary, the claims recite
circuitry for testing processing elements.
The examiner fails to show that teaching or suggestion of
the claimed limitations. "Obviousness may not be establish
using hindsight or in view of the teachings or suggestions of
the inventor." Para-Ordnace Mfg., SGS Importers Int’l, 73
F.3d
1085, 1087, 37 USPQ2d 1237, 1239 (Fed. Cir. 1995) (citing W.L.
Gore & Assocs., Inc. v. Garlock, Inc., 721 F.2d 1540, 1551,
1553, 220 USPQ 303, 311, 312-13 (Fed. Cir. 1983), cert.
denied, 469 U.S. 851 (1984)). The mere fact that prior art
may be modified as proposed by an examiner does not make the
modification obvious unless the prior art suggested the
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