Ex parte GRUETZNER et al. - Page 6

          Appeal No. 1997-3129                                                        
          Application No. 08/301,743                                                  

          obviousness.  Note In re Oetiker, 977 F.2d 1443, 1445, 24                   
          1443, 1444 (Fed. Cir. 1992).                                                
               With respect to independent claims 1, 11, 14, and 17, the              
          Examiner has demonstrated (Answer, page 4) how the various                  
          claimed circuit chips, storage elements, and transceiver                    
          circuits are present in the test device of Sauerwald.  As the               
          basis for the obviousness rejection, the Examiner asserts the               
          obviousness to the skilled artisan of integrating the off-chip              
          selector circuitry illustrated, for example, in Sauerwald’s                 
          Figure 4, within one of the circuit chips 52 and 54.                        
               In response, Appellants attack the Examiner’s                          
          establishment of a prima facie case of obviousness by                       
          asserting (Brief, pages 8-10) that Sauerwald teaches away from              
          on-chip selection circuitry.  Appellants point to passages in               
          Sauerwald, directed to a chip self-test feature, which                      
          describe the disadvantages and advantages under certain                     
          conditions of placing such feature on-chip.  Appellants                     
          proceed to draw the inference that, since Sauerwald is silent               
          about on-chip self testing for interconnects, there is an                   
          implicit teaching away from such feature.                                   


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