Appeal No. 2000-0671
Application No. 08/909,507
Thus, it appears that the examiner’s position has shifted from the rejection
rationale set forth in the statement of the rejection to the examiner’s response to
appellants’ arguments, and it is no longer clear what the examiner considers, in
Jarwala, as corresponding elements to the instant claimed subject matter. If the
examiner is now, somehow, attributing an inherency to Jarwala regarding the claimed
sockets, we disagree since it is not necessarily so that Jarwala provides sockets in
order to switch boundary scan and non-boundary scan devices, as the examiner
implies. Such devices may very well be soldered to the board and not removably
coupled thereto. We simply do not know, as Jarwala does not show any sockets
connecting these devices to circuit board 10. Even if it might have been obvious to so
connect such devices, the rejection before us is one of anticipation under 35 U.S.C. §
102 and not one of obviousness under 35 U.S.C. § 103.
Since the examiner has not shown that each and every claimed element and its
functional relationship with the other claimed elements is taught by Jarwala, we will not
sustain the rejection of claims 1-3, 9 and 15 under 35 U.S.C. § 102 (b).
We also will not sustain the rejection of claims 4 and 5 under 35 U.S.C. § 103,
as unpatentable over Jarwala because while the examiner argues that it would have
been obvious to provide a cascade input connector and a cascade output connector in
Jarwala, the problem, outlined supra, with regard to the corresponding elements and
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