Ex Parte TEENE - Page 4



          Appeal No. 2001-0632                                                        
          Application No. 08/650,248                                                  

          distribution for reducing clock skew and Meltzer teaches ordering           
          of SRLs in a scan chain, that is no reason to take only so much             
          from each reference as needed for a particular claim and forcibly           
          combine the two teachings to reach the instant claimed subject              
          matter.  There must be some suggestion in the prior art, or some            
          reason for the artisan, to make the modification, other than what           
          is taught by appellant.                                                     
               The examiner further explains that Lim provides motivation             
          by teaching advantages that include reduction in delay between              
          buffers and reduction in tributary length “which are highly                 
          advantageous to the scan based test design taught by Meltzer” and           
          that Meltzer “expresses desirability to achieve maximum delay               
          fault coverage while Lim’s invention provides reduced delay                 
          between buffers thus providing motivation...” [answer-pages 4-5].           
          We disagree.  There is no suggestion in Lim that the invention              
          described therein would have any utility in a scan based test               
          design or in the ordering of scan chains.  There is no suggestion           
          that Lim’s distribution of a clock signal would have any utility            
          in a scan chain of SRLs as taught by Meltzer.  Accordingly, we              
          cannot accept the examiner’s reasoning as a convincing rationale            
          for making the combination in such a manner as to establish                 
          obviousness in accordance with 35 U.S.C. 103.                               
                                         -4–                                          




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