Ex parte PARKER et al. - Page 5




          Appeal No. 1997-3133                                       Page 5           
          Application No. 08/370,076                                                  


          configuration.  Any change in the scan path configuration will              
          go unnoticed in Hassan and lead to erroneous results.  While                
          Hassan discloses test generation and diagnosis for verifying                
          the interconnections of integrated circuits, there is no                    
          suggestion of determining a post-test configuration of the scan             
          path and certainly no suggestion of comparing it with a pre-                
          test configuration of the scan path.                                        
               Independent claim 18 recites, more specifically, that                  
          there is a determination of the actual bit length of the scan               
          path in the post-test configuration.  While the examiner does               
          not explain, with any degree of specificity, the significance               
          of Parker or how or why it is being applied, ostensibly, the                
          examiner relies on Parker for the determination of actual bit               
          length of a scan path.  Appellants point to Figure 5 of Parker              
          where a diagnosis step immediately follows a “stop testing”                 
          step.  Accordingly, it appears reasonable that Parker performs              
          no action between stopping the test and diagnosing any faults,              
          unlike the instant claimed invention wherein a shift in                     
          signature pattern through the scan path occurs in a post-test               
          configuration in order to determine the actual bit length of                
          the scan path in the post-test configuration.  The examiner’s               







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