Ex parte NIWA - Page 7




              Appeal No. 1998-1103                                                                                     
              Application No. 08/668,718                                                                               




              step S15 is completed (column 16, lines 62-69 of Okada) is simply not enough to convince                 
              us of the anticipatory nature of Okada regarding the subject matter of independent claim 8.              
                     Accordingly, we will not sustain the rejection of claim 8, or of claim 9 or 23, since             
              they stand or fall with claim 8, under 35 U.S.C. § 102(b).                                               
                     We turn, now, to the rejection of claims 10 and 24 under 35 U.S.C. § 103 over the                 
              two Nozawa references.  We will also reverse this rejection.                                             
                     It is the examiner’s position that Nozawa 998 teaches a means for disabling a                     
              command by determining if there is a slash (/) and numeral at the beginning of a                         
              command, and comparing the numeral to a numeral set by the user through a block select                   
              switch.  If they match, the command is skipped.  However, as the examiner recognizes,                    
              Nozawa 998 does not employ a skip function within a test mode.  Claims                                   
              10 and 24 explicitly require “means for disabling, only during said test mode, a specified               
              miscellaneous command from being executed.”  Thus, the examiner turns to                                 
              Nozawa 444 for a disclosure of a block skip scheme to be employed during a “dry run.”                    
              The examiner concludes that the combination of these references teaches a system for                     
              selectively disabling commands, only during a test mode.                                                 






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