Appeal No. 1999-2344
Application 08/720,586
the brief and reply brief as to this reference in his responsive
arguments portion of the answer. Therefore, we reverse all
rejections under 35 U.S.C. § 102 based upon Whetsel.
We also reverse the rejections under 35 U.S.C. § 102 based upon
Powell and Hwang. We agree with appellants’ observation at page 3
of the principal brief on appeal that Hwang and Powell disclose
essentially the same features with an essentially common disclosure.
The disputed language in representative claim 1 on appeal between
the examiner and appellants is the feature of claim 1 “a serial scan
generator embedded in the electronic system upon manufacture.”
Essentially the same features are recited in independent method
claim 10 on appeal.
To simplify our consideration of the issues, we refer to the
following statements made by the appellants at the top of page 2 of
the reply brief:
The Applicants have never argued that the references did
not teach a serial test scan generator. The Applicants
urge that the cited references fail to show that the
serial test scan generator is “embedded in the electronic
system upon manufacture” as recited in claim 1. Thus the
Applicants do not dispute that Hwang et al and Powell et
al inherently disclose the serial test scan generator.
However, the Applicants submit that this teaching of Hwang
et al and Powell et al fails to anticipate the recitation
in claim 1 that the “serial scan generator embedded in the
electronic system upon manufacture.”
3
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