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–Page: Previous 1 2 3 4 5 6 7 NextLast modified: November 3, 2007