Appeal No. 1997-3133 Page 6
Application No. 08/370,076
response does not address this issue of the Parker disclosure
but, instead, contends that “it is the examiner’s position that
Hassan’s counting number of ‘1's from the shifted out response
is applicable to the claimed ‘determination of the actual bit
length of the scan chain’” [answer-page 6]. So, now it appears
that Parker is not used by the examiner for such a showing. It
is unclear to us what role, if any, Parker plays in the
examiner’s rejection. In any event, we disagree with the
examiner’s assessment that Hassan’s counting of a number of 1's
from the shifted out response is equivalent or analogous to the
claimed determination of “an actual bit length of the scan path
in said post-test configuration” because Hassan does not appear
to be interested at all in determining the bit length of the
scan path. Certainly, the examiner has made no prima facie
showing that Hassan discloses or suggests the instant claimed
subject matter.
Accordingly, the examiner’s decision rejecting claims 13
through 28 under 35 U.S.C. 103 is reversed.
REVERSED
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