Appeal No. 1999-2344
Application 08/720,586
We have not been provided any evidence by the examiner in
Powell or Hwang that a serial scan generator is “embedded” in an
electronic system upon manufacture as required by both independent
claims 1 and 10 on appeal. The examiner’s assertion at page 4 of
the answer that such a generator is incorporated internally of the
VLSI circuit 10 in Figure 1 of Powell and Hwang is misplaced. The
mere mention of a patent to Komonytsky, U.S. Patent 4,519,078, at
columns 1 and 2 of Powell and Hwang provides to us no evidence to
substantiate the examiner’s assertion that such a generator is
“embedded” in the electronic system of these references. Moreover,
the scan data in and scan data out signals 28 and 30 in Figure 1 of
these references indicates that they come from an external source to
VLSI circuit 10 itself. Additionally, since the rejections are set
forth under 35 U.S.C. § 102, to the extent Komonytesk may be relied
upon by the examiner on the merits for its teachings in conjunction
with Powell or Hwang, no rejection has been made before us under
35 U.S.C. § 103.
Beyond all this, we agree with appellants’ assertions in the
principal brief and reply brief that Powell and Hwang do not
individually provide any disclosure within themselves of a serial
scan generator embedded in an electronic system upon manufacture as
recited in both independent claims 1 and 10 on appeal. Even though
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